3\0fc .3 Cornell University Law Library FROM THE BENNO LOEWY LIBRARY RECEIVED BY CORNELL UNIVERSITY UNDER THE WILL OF MR. BENNO LOEWY Cornell University Library KF 3106.3.S59 A digest of patent caseSKiffi'll " 3 1924 019 219 793 X^/!. U' IXi QjnrnpU Slaui i^riyonl ICibtara Cornell University Library The original of tiiis book is in tine Cornell University Library. There are no known copyright restrictions in the United States on the use of the text. http://www.archive.org/details/cu31924019219793 A DIGEST PATENT CASES EMBRACING ALL PATENT CASES, DECIDED IN THE FEDERAL AND STATE COURTS FROM THE FOUNDATION OF THE GOVERNMENT, FROM 1789 TO 1888. WILLIAM EDGAE SIMOIsTDS, COUNSELLOR AT LA.? NEW YORK : L. K. STROUSB & CO., Law Publishers, 95 Nassau Stbbbt. 1888. B 11-533 COPYRIGHT, 1888, BY WILLIAM EDGAR SIMONDS. .Sav'XS^' li^OTE OF PEEFAOE A'NT> EXPLAFATIOI^. The writing of this digest has been a part of my daily work for many years. This labor was not originally Intended to result in a printed book, but in a digest for my own use ; and it is pos- sible that the book might have beto more nearly perfect if the intent to produce a book had pre- vailed from the first. The book is intended, nevertheless, to be thorough and exhaustive ; it is certainly all original work ; nothing has been taken at second hand. It will be observed that quotations are used most liberally. I have not used my own language whenever I could use that of the court ; the object of this is that the digest matter shall carry on its face evidence of accuracy and authenticity. The classification is somewhat novel, but it has not been adopted for the sake of novelty ; it is the outgrowth of twenty years of practice in patent causes. There is no room for expectation that the book will prove financially remunerative to me. If it shall prove to be a good working tool for lawyers I shall feel amply repaid. , ' • W. E.S. HABTroBD, Conn., Oct., 1888. DIGEST. ABANDONMENT. "Abandonment," as used in this title, means the dedication of an invention to the public ; courts have generally if not always used it as meaning the abandonment of a completed invention. The vsrord has other connections or relations, as in " Abandoned Experiment" [see "Prior Use — Abandoned Experiment"], which means an attempt at the production of an inven- tion given up before the stage of successful re- duction to practice is reached ; and in " Aban- doned Application," which means the abandon- ment of an application for a patent ; and which may or may not be a factor in evidencing the abandonment of an invention. More than two years' public use of an invention prior to appli- cation for patent therefor is sometimes spoken of as " Statutory Abandonment." "Abandonment" in the Patent Acts. Act approved March 3d, 1839. Section 7. And be it further enacted. That every person or corporation who has or shall have purchased -or constructed any newly-in- vented machine, manufacture, or composition of matter, prior to the application by the in- ventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or any other person interested in such invention ; and no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the appli- cation for a patent as aforesaid, except on proof of abandonment of such invention to the public ; or that such purchase, sale, or prior use has been for more than two years prior to such applica- tion for a patent. [Repealed July 8th, 1870.] Act approved March 3d, 1863. Sec. 3. Arid be it further enacted, Hh&t eyerj patent shall be dated as of a day not later than six months after the time at which it was passed and allowed, and notice thereof sent to the ap- plicant or his agent. And if the final fee for such patent be not paid within the said six months, the patent shall be withheld, and the invention therein described shall become public property as against the applicant therefor : Pro- irided. That in all cases where patents have been allowed previous to the passage of this act, the said six months shall be reckoned from the date of such passage. [Repealed July 8th, 1870.] Act approved June 35th, 1864. Be it enacted by tJis Senate and House of Repre- sentatives of the United States of America in Congress assembled, That any person having an interest in an invention, whether as the inventor or assignee, for which a patent was ordered to issue upon the payment of the final fee, as pro- vided in Section 3 of an act approved March three, eighteen hundred and sixty-three, but who has failed to make payment of the final fee, as provided by said act, shall have the right to make the payment of such fee, and receive the patent withheld on account of the non-payment of said fee, provided such payment be made within six months from the date of the passage of this act : Provided, That nothing herein shall be so construed as to hold responsi- ble in damages any persons who have manufac- tured or used any article or thing for which a patent, as aforesaid, was ordered to be issued. [Repealed July 8th, 1870.] Act approved March 3d, 1865. Be it enacted by the Senate and House of Sepre- sentatims of the United States of America in Congress assembled, That any person having an interest in an invention, whether as inventor or assignee, for which a patent was ordered to is- sue upon the payment of the final fee, as pro- vided in Section 3 of an act approved March three, eighteen hundred and sixty-three, but who has failed to make payment of the final fee as provided in said act, shall have the right to make an application for a patent for his ABANDONMENT. invention, the same as in the case of an original application, provided such application be made within two years after the date of the allowance of the original application. [Repealed July 8th, 1870.] Act approved July 8, 1870. Sec. 34. (This section provides for the patent- ing of a new and useful invention, " unless the same is proved to have been abandoned.") Sec. 35. And be it further enacted, That any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to is- sue upon the payment of the final fee, but who has failed to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discovery the same as in the case of an origi- nal application : Provided, That the second ap- plication be made within two years after the al- lowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent, as aforesaid, was ordered to issue, prior to the issue thereof : And provided further, That when an application for a patent has been rejected or withdrawn, prior to the passage of this act, the applicant shall have, six months from the date of such passage, to renew his application, or to file a new one ; and if he omit to do either, his application shall be held to have been abandoned. Upon the hearing of such renewed applications abandonment shall be considered as a question of fact. Sec. 61. (This section provides as a defence to an action for infringement of a patent the fact that the invention " had been abandoned to , the public") [Repealed June 33d, 1874.] Act approved June 33d, 1874. Sec. 4886. (This section provides for the pat- enting of a new and useful invention " unless the same is proved to have been abandoned. ") Sec. 4897. Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon payment of the final fee, taut who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such in- vention or discovery the same as in the case of an original application. But such second ap- plication must be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the is- sue of the patent. And upon the hearing of re- newed applications preferred under this section, abandonment shall be considered as a question of fact. Sec. 4930. (This provides as a defence to an action for infringement of a patent the fact that the invention " had been abandoned to the pub- lic") Cases. 1. If the inventor suffers his invention to be used freely and fully by the public for years, he will be held to have made a gift of it to the public Whittemore et al. v. Cutter, 1 Gall. 478.— Stoky, 1813. 3. An invention once in public use, and abandoned to the public, cannot be exclusively appropriated afterward by an independent in- ventor. Eoans v. Eaton, 1 Peters' C. C. 333. —Wash. 1816. 3. No disuse of a patented invention amounts to abandonment. Gray et al. v. James et al., 1 Peters' C. C. 394.— Wash. 1817. 4. " No man is permitted to lie by for years and then take out a patent. If he has been practising the invention with a view of improv- ing it, . . . that ought not to prejudice him. " The intent of the delay is a question for the jury, also whether allowing use before patent does not amount to abandonment to the pub- lic. Morris v. Huntington, 1 Paine, 348. — Thompson, 1834. 5. "If an inventor makes his discovery public, looks on, and permits others to freely use it, without objection or assertiorfof claim to the invention, of which the public might take notice, he abandons." It makes no difference that the article was made by a particular individual, by private permission of the inventor. " It is pos- sible that the inventor may not have intended to give the benefit of his discovery to the public ; ... it is not a question of intention, . . . but of legal inference." Pennoek et al. v. Dialogue, 4 Wash. 538.— Wash. 1835. 6. Abandonment is a question of fact. — lb. 7. "If he" [the inventor] " asserts no exclu- sive right for years, with a full knowledge that the public are led by it to a general use, such use . . . amounts to strong proof that he waives the exclusive right." [Facts: Plaintiff made the invention in 1804 ; it was used some by the public to 1815 ; after 1815 in general use ; patent taken in 1833.] Melius v. Silsbee, 4 Mason, 108. — Stort, 1835. ABANDONMENT. 8. The Inventor's " acts are to be construed liberally; . . . be is not to be estopped by licens- ing a few persons to use his invention to ascertain its utility, or by any such acts of peculiar indulg- ence and use as may fairly consist with the in- tention to hold the exclusive privilege. ' ' — lb. 9. " If, before the patent is taken out, the in- ventor looks on and sees his invention going into general use, without objection on his part, the courts will treat his conduct as equivalent to an abffadonment. " — Treadwell et al. v. Bladen, 4 Wash. 703.— Wash. 1827. 10. " It is possible that, without . . use by others, an unreasonable and causeless or faulty delay in taking out . . . patent might be justly, and upon legal principles, considered as amount- ing to abandonment." — lb. 11. To make a discovery some time in the year, to put it into practical use during the lat- ter part of the year, and to patent it by the 10th of January in the following year is not faulty delay. — lb. 12. " Au inventor may abandon his inven- tion." "This inchoate right thus once gone cannot be resumed." Pennock et al. v. Dia- logue, 2 Peters, 1.— Sup. Ct. 1829. 13. The question of abandonment which gen- erally arises is a question of fact. When all the facts are given, the court may state the deduci- ble legal conclusion. — lb. 14. It is not the object of the law to reward those least pi'ompt to communicate their discov- eries. — lb. 15. The first Inventor cannot acquire a good title to a jDatent if he suffers the thing invented to go into public use, or to be publicly sold for use, before he makes application. — lb. 16. An inventor may take reasonable time to experiment and to pi-epare specification, model, and drawing. Whitney et al. v. Emmett et al. , 1 Bald. 308.— Baldwin, 1831. 17. Vigilance is necessary. If the invention becomes known to the public by fraudulent means, the inventor should assert his right im- mediately and take steps to legalize it. Stiaio v. Cooper, 7 Peters' C. C, 392.— Sdp. Ct. 1833. 18. " No matter by what means an invention may be communicated to the public, . . . any ac- quiescence in the public use by the inventor will be an abandonment of the right. ' ' — lb. 19. " If the right were asserted by him who fraudulently obtained it, perhaps no lapse of time could give it validity." — lb. 20. " The acquiescence of an inventor in the public use . . . can in no case be presumed when he has no knowledge of such use." Acqui-- escence is presumed where the public use is known or might be known to the inventor. —lb. 31. Neither attempts to make improvements — not successful — nor a prior competing patent excuse delay in patenting. — lb. 32. Three years' delay, with intervening pub- lic use, held fatal. — lb. 23. Abandonment by silence in view of public use is not a question of intention. — lb. 24. Public use after patent granted does not make toward abandonment. — lb. 35. "It is quite competent for a patentee at any time, by overt acts, or by express dedica- tion, to abandon and surrender to the public, for their use, all the rights secured by his pat- ent, if such is his pleasure, clearly and deliber- ately expressed, ' ' Wyeth et al. v. Stone et al. , 1 Story, 273. —Story, 1840, 26. " If, for a series of years, the patentee ac- quiesces without objection in the known public use by others of his invention, or stands by and encourages such use, such conduct will afford a very strong presumption of such an actual abandonment or surrender. ' ' — lb. 27. " A fortiori, the doctrine" — of presump- tive abandonment — " will apply to a case where the patentee has openly encouraged or silently acquiesced in such use by the very defendants whom he afterward seeks to prohibit, by injunc- tion, from any further use. ' ' — lb. 38. "If such a defence" — that of abandon- ment, to be presumed from the acts of the paten- tee — " were not a complete defence at law, it would certainly furnish a clear and satisfactory ground why a court of equity should not inter- fere." — lb. , 29. " If he" [an inventor] " means to surren- der his exclusive right in a qualified manner, . he should at the very time give public notice of the nature and extent of the public use." — lb. 30. " The inventor, and the inventor alone, is competent to abandon his invention to the public, and no use by the public, except with his knowledge and consent, can be deemed an aban- donment of his invention to the public. ' ' Pierson V. Eagle Screw Co., 3 Story, 403.— Stoky, 1844. 31. "Delay which may occur in the Patent Office, In making out the patent, cannot operate to the injury of the applicant." Root\. Ball et al., 4 McLean, 177 ; per curiam, 1846. 32. If a caveat or application for patent, al- though originally informal, be followed up with reasonable diligence, and if, eventually, the patent is granted, it prevents any right becoming acquired by strangers interfering in the mean time. Spa/rkman etalY. Higgins et al., 1 Blatch. 205.— Bbtts. 1846. ABANDONMENT. 33. Before taking out a patent the giving of "a license by tlie inventor is not an abandon- ment." McOay v. Burr, 6Penn. St. Eep. 147. —Gibson, 1847. 34. An inventor made application for a patent in 1836, which was rejected, and afterward fol- lowed it up, at intervals, until he obtained his patent in 1843. The judge charged the jury, " That the proof of abandonment of his appli- cation would depend upon two circumstances : whether he meant to give it up— to give all up with regard to it — or whether, being needy, he gave up for a short time, for want of funds." Adams et al. v. JEcLwards et al., 1 Fish. P. C. 1. —Woodbury, 1848. 35. " An individual who has obtained a pat- ent for a thing which he claimed to have in- vented cannot at any future time claim another patent for a substantial part of the same thing. " Smith Y. Ely et al., 5 McLean, 76.— McLean, 1849. 36. " There may be an abandonment by the inventor at any time, even within the two years before the application for his patent. " Pitts v. Hall, 2 Blatch. 230.— Nelson, 1851. 37. " An abandonment or dedication may oc- cur within the two years, and at any time down to the procurement of the patent. The mere use or sale, however, of the machine within the two years will not alone or of itself work an aban- donment. There must be something more, be- j cause Section 7 of the act of 1839 permits the sale or use by the patentee at any time within two years before his application, without its operat- ing to invalidate his right. The use or sale must be accompanied by some declarations or acts going to establish an intention on the part of the jiatentee to give to the public the benefit of his improvement. ' ' — Ih. 38. Although a man may declare his intention to dedicate his improvement to the public, " he is entitled to the locus penitentice, and . . . there must be something more than mere words to fasten on him the intention which, in judgment of law, works an abandonment of his invention. There must be acts. " " The mere expression of an intention not to take measures for the purpose of securing to himself the exclusive enjoyment of this property, or the mere declaration of an in- tention to dedicate it to the public, cannot be re- garded as equivalent to an actual declaration. " —lb. 39. " Abandonment or dedication . . . operates in the nature of a forfeiture of a right, which the law does not favor, and which should be made out beyond all reasonable doubt." — lb. 40. An invention that is described but not claimed in a patent is, after a lapse of six years, abandoned to the public so that it cannot be re- claimed by reissue. Batten v. Taggert, 2 Wall. Jr. 101.— Kane, 1851. 41. " The mere fact of making and selling an improvement or invention, or of putting it into public use. at any time within two years before the application for a patent, is not of itself an abandonment of the invention to the public." McCormiek v. Seymour et al., 2 Blatch. 240. — Nelson, 1851. 42. " Tliose who rely upon the ground that a party has forfeited a legal right secured to him in due form of law, for the purpose of defeating his enjoyment of that right, must make out the jDoint clearly and satisfactorily, beyond all rea- sonable doubt or hesitation ; because the law does not favor an abandonment, and throws upon the party who seeks to obtain the benefit of a forfeiture the burden of proving it beyond all reasonable question." — lb. 43. What is described but not claimed in a patent may properly be claimed afterward, in a new patent in the absence of statutory bar of public use. Mini's Assignee v. Adams, 3 Wall. Jr. 20.— Gkier, 1854. 44. What is described but not claimed in the patent may be described and claimed in a later patent to the same inventor. A description with- out claiming in the first patent does not work abandonment. O'Reilly et al. v. Morse et al., 15 Howard, 62.— Sup. Ct. 1853. 45. He who describes but does not claim in a patent features of construction does not thereby abandon such features of construction to the public so that he cannot afterward, in a subse- quent patent, claim such features. Battin et al. V. Taggert, 17 Howard, 74.— Sup. Ct. 1854. 46. " As the law stood . . . in October, 1834, . . . the public use of the invention with the consent of the patentee, or sale of it prior to the time of his application for a patent, operated as a forfeiture — as a dedication to the public." Wi- nans v. N. Y. & Harlem B. B. Co., 4 Fish. P. C. 1. — Nelson, 1855. 47. In 1834 and 1835 Walter Hunt invented an improvement in sewing-machines upon which successful experiments were repeatedly made ; not long thereafter Hunt sold one half the in- vention to Arrowsmith and subsequently the other half. In 1846 Howe obtained letters pat- ent on a conflicting improvement. In 1853 Hunt repurchased his invention and applied for a patent ; Hunt was held to have abandoned his invention. Hunt v. Howe, 1 MacArthur's P. C. 366.— MoRSELL, 1855. 48. " If the plaintiffs, after their invention ABANDONMENT. ■was perfected, acquiesced in its use in public for a less term than two years, without applying for a patent, and the jury shall be satisfied, from such acquiescence and the other facts of the case, that the plaintiffs, in fact, abandoned their invention, concluding not to patent it, but to dedicate it to the public use, they could not re- call such dedication, or defeat such abandon- ment by a subsequent application for a pat- ent, and their patent is therefore void." Ran- som etal\. N. Y.,1 Fish. P. C. 253.— Hall, 1856. 49. " If, after the plaintiffs had made this in- vention, . . . they, in fact, deliberately abandoned it to the public use, and concluded not to patent it ; if they dedicated it to the public use, no mat- ter for what reason, then that dedication cannot be recalled, and they have no right to recover. ... If the plaintiffs, subsequent to the date of their letters-patent, have abandoned their in- vention to the public, and waived and abandoned the exclusive i^rivileges intended to be secured by such patent, they cannot recover in this action ; and . . . the jury has a right to infer such an abandonment, from their acquiescence in the use of the invention by others, their neglect to assert their claims by suit or otherwise, their omission to sell license to use such invention, their neglect to make efforts to realize any per- sonal advantage from their patent, and similar circumstances, if they think the evidence estab- lishes sTich fact of abandonment ; and . . . cir- cumstances of that character may also be con- sidered in connection with the other evidence upon the question of the originality of the plain- tiffs' alleged invention." — iS. 50. " The owner of a patent has an undoubted right lo surrender it to public use." Wayne V. Holmes, 1 Bond, 37. — LE.\.yiTT, 1856. 51. " If an inventor, by his actions and con- sent, shows that he has made a dedication of his invention to the public, he cannot afterward disavow such a dedication, and obtain a patent. Bellv. Daniels et al., 1 Bond, 313.— Lbavitt, 1858. 53. Abandonment, or dedication to the public, may be made as well after patent granted as be- fore ; but where the patent has actually been granted, it would undoubtedly require a strong ca.se to prove abandonment. — lb. 53. If an invention " was publicly used for a long period by the inventor himself, not in the way of experiment, but for gain," such action constitutes abandonment. — lb. 54. Practical acquiescence in the claim of an- other to a patent is both an estoppel against and abandonment by him who thus acts. Carrol v.0«s??iJn'M,lMacArthur'sP. C. 581. — Morsbll, 1858. 55. " The relation borne to the public by in- ventors, and the obligations they are bound to fulfil in order to secure from the former pro- tection and the' right to remuneration, by no means forbid a delay requisite for completing an invention, or for a test of its value or success by a series of sufficient and practical experiments ; nor do they forbid a discreet and reasonable for- bearance to proclaim the theory of a discovery during its progress to completion, and preceding an application for protection in that discovery. The former may be highly advantageous, as tending to the perfecting of the invention ; the latter may be indispensable, in order to prevent a piracy of the rights of the true inventor.'' Kendall et al. v. Winsor, 31 Howard, 323. — Sup. Ct. 1858. 56. "It is the unquestionable right of every inventor to confer gratuitously the benefits of his ingenuity upon the public, and this he may do either by express declaration or by conduct equally significant with language — such, for in- stance, as an acquiescence with full knowledge in the use of his invention by others ; or he may forfeit his rights as an inventor by a wilful or negligent postponement of his claim, or by an attempt to withhold the benefit of his improve- ment from the public until a similar or the same improvement should have been made and intro- duced by others. Whilst the remuneration of genius and useful ingenuity is a duty incum- bent upon the public, tlie rights and welfare of the community must be fairly dealt with and effectually guarded. Considerations of individ- ual emolument can never be i^ermitted to operate to the injury of these." — lb. 57. " The real intent of an inventor, with re- spect to an assertion of surrender of his rights under the Constitution and laws of the United States, whether it be sought in his declarations or acts, or in the forbearance or neglect to speak or act, is an inquiry or conclusion of fact." — lb. 58. " By the application filed in the Patent Office the inventor makes a full disclosure of his invention, and gives public notice of his claim for a patent. It is conclusive evidence that the inventor does not intend to abandon it to the public. The delays afterward interposed, either by the mistakes of the public officers or the de- lays of the courts, where gross laches cannot be imputed to the applicant, cannot affect his right. " Adams v. Jones et al., 1 Fish. P. C. 537. — Grieb, 1859. 59. "If an inventor claims two distinct im- provements in one machine, he may apply for ABANDONMENT. them jointly, and have a single patent for both. If he has made a mistake as to one of the im- provements claimed, but is clearly entitled to a patent as to the other, he cannot be justly said to have abandoned- either during a litigation as to his right to both. " — lb. 60. " The true meaning of the vford ' aban- donment ' in the acts of Congress is an abandon- ment of the invention to the public — a dedica- tion of his discovery to the free use of his fel- low-beings. ' ' Babcock v. Degener,! MacArthur's P. C. 607.— Merrick, 1859. 61. " Merely withholding" an " invention from the public . can never amount to an abandonment ; however, it may, in connec- tion with the circumstances, pile up difficul- ties, if too long continued, in the way of assert- ing and proving priority over another inventor who applies for a patent. It may raise up an equity in favor of the junior discoverer which will call for the fullest measure of proof on the part of the first inventor to disperse the cloud of distrust with which he has thereby enveloped his own case, but of itself cannot defeat his claim" — lb. 63. In applications for patents the Commis- sioner has jurisdiction as to the question of abandonment. Wickeraham v. Singer, 1 Mac- Arthur's P. C. 645.— Merrick, 18ff9. 63. "Wickersham made an application for pat- ent for improvement in sewing-machines Febru- ary 13th, 1850. On the 20th the papers were returned to him for correction. March loth he returned amended papers. April 5th, 1850, the papers were returned to him for further amend- ment. May 38th, 1851, he withdrew his appli- cation and took back the $20 allowed by law. From that time to October 3d; 1858, he made no movement in the matter, and then filed another application. Meantime Singer procured patents covering the same subject-matter and put the improvements into use. During this interval of delay Wickersham applied for five different patents in this country and one in England, and made a visit to England in 1854. Wickersham was held to have abandoned his invention, two years' public use was found against him, and priority of invention was found in favor of Singer. — lb. 64. What an inventor describes but does not claim, he does not thereby abandon, and may subsequently patent. Hayden v. Suffolk M'fg Co., 4 Fish. P. C. 86.— Spragub, 1863. 65. A patent was applied for December 11th, 1854, and issued September 11th, 1860. The same inventor applied for another patent June 15th, 1857, which was issued December 1st, 1857. The patent first applied for and last issued de- scribed and claimed what was also embraced by the claim of the last applied for and first issued. The court held that the patent last issued was not thereby invalidated. — lb. 66. Where an inventor delayed making his application for patent because he was in the em- ploy of another party who held a controlling patent on the same general subject-matter; the facts were held not to constitute abandonment. White et al. v. Allen, 3 Clifford, 234.— Cmp- FORD, 1863. 67. Two joint inventors filed their application in the Patent Office in June, 1847 ; the specifica- tion thereof was loose and imperfect ; the mat- ter was delayed in the Patent Office in- one way and another till 1853, when the patent issued. Defendants claimed this to constitute abandon- ment. The court held otherwise, saying that inventors are "not to be held accountable for the delays in the Patent Office. " Saylesv. Chi- cago & N. W. R. B. Co., 1 Bissell, 468.— Drum- MOND, 1865. 68. Where a later patent claims what was de- scribed but not claimed in the earlier patent of the same party, and the two applications were pending at the same time, the issue of the first patent does not operate as an abandonment of the matters described but not claimed. Suffolk Co. V. Hayden, S Wall. 315.— Sup. Ct. 1865. 69. Cummings applied for his patent on rub- ber base for artificial teeth in 1855, and the ap- plication was rejected in 1856. The patent was " granted in 1864, having been revived but a short time previous. Meantime the invention had gone into general use. Thereof the court said : "Is it the law that because an inventor files his ap- plication, which is refused by the Office, lie may sleep on his rights indefinitely, and that at any jseriod in his lifetime, or that of his representa- tives, the application may be revived as against the public ? I think not. Prima facie, I think he would have to show a reason why he should be so permitted. The judgment of condemna- tion by the Office advertises to the country, at least, that he stands in no better position than before the application was made. The country is advised, by the deliberation of the only tri- bunal provided by law for the ascertainment, at that stage of the invention, of his right, that he has none. More especially is he himself advised of that fact, for he is a party to the proceedings, and more immediately damnified by the rejection of the application. That rejection would at least be regarded, in the logic of equity, as a notice to him to proceed with diligence to traverse and reverse the judgment of the Office." Goodyear ABANDONMENT. et al. V. Bills, 3 Fish. P. C. 134.— Caettbk, 1866. 70. An inventor applied for liis patent April 13th, 1855 ; it was rejected February 6th, 1856, and no appeal taken. He made a new applica- tion March 35th, 1856, on which patent was granted. He was held not to have abandoned. Dental Vulcanite Co. v. Wetherbee, 3 Clifi. 555. —Clifford, 1866. 71. " It is not possible to hold that any use of the invention without the consent of the invent- or, while his application for a patent was pend- ing in the Patent Office, can defeat the operation of the letters-patent after they are duly granted. Such delays axe sufficiently onerous to a meri- torious inventor, if his patent is allowed to have lull operation after it is granted ; but it would be a very great injustice to hold that any delay which the inventor could not prevent should, under any circumstances, affect the validity of his patent." — lb. 73. The complainant sold a patented hard rub- ber compound for dental purposes, all complete except the application of heat, and labelled the packages to indicate that only licensees under the patent were permitted to use the compound. As a matter of fact, many who were not licensees bought and used the compound. Defendant pleaded abandonment. The court held that abandonment had not taken place. Goodyear et al. V. Waite, 3 Pish. P. C. 343.— Nelson, 1867. 73. The issue of a reissued patent is prima facie evidence that the original was never aban- doned. Hoffheins et al. v. Brandt, 3 Fish. P. C. 318.— Giles, 1867. 74. " Undoubtedly an inventor may abandon his invention, and surrender or dedicate it to the public ; but mere forbearance to apply for a pat- ent during the progress of experiments, and un- til the party has perfected his invention and test- ed its value by actual practice, affords no just grounds for any such presumption." Agawam Co. V. Jordan, 7 Wall. 583.— Sup. Ct. 1868. 75. " Abandonment to the public . need not be two years before the date of the applica- tion for the patent ; it may be afterward, al- though the presumption always is against an abandonment to the public by a patentee after he has applied for his patent. But he can do .so ; he can do so within two years ; he can do so at any time. It is a matter that may be proved, but it is never to be presumed." Am. H. & L. a. & B. M. Co. V. Am. T. & M. Co. et al., 1 Holmes, 503.— Shepley, 1870. 76. "A person is sometimes said to have abandoned his invention when he gives up the idea ; abandons it in the popular sense ; relin- quishes the intention of perfecting his inven- tion, so that another person may take up the same thing and become the original and first in- ventor. But that is not the kind of abandon- ment that is referred to here. There is another kind of abandonment ; and that is where a party, having made an invention, allows the public to use it, with his knowledge and con- sent ; allows it to be incorporated into other ma- chines with his knowledge and consent, and to be used by anybody without objection ; as, for instance, if you invent a machine, put it into public use and sell it to everybody who chooses to buy it, and if you attach to that machine an- other invention of yours, and allow everybody who chooses to buy that and use it, without ob- jection on your part, with your consent, with your permission, with your allowance, not for the mere purpose of experiment, but for the purpose of profit and gain, that would be an abandonment of it to the public, and you could not afterward rightfully, honestly, honorably, legally, take out a patent for that invention." — /*. 77. " In the sense in which " abandonment ' is used in this connection, it is dedication to the public, a giving up of the claim to monopoly in the invention, and it must be shown affirmative- ly. " The burden is upon the defendants. — lb. 78. " If a person has once abandoned his in- vention or dedicated it to the public, then, as a matter of law, it has gone from him, and he has no power of revocation or resumption. ' ' — lb. 79. " There could hardly have been an aban- donment without an intention to abandon." Jm-dan v. Dobson et al., 3 Abb. U. S. 398.— .Strong, 1870. 80. ' ' Forfeitures and abandonments are not favored. They must be clearly made out." Singer et al. v Braunsdxyrf et al., 7 Blatch. 531. — Blatchford, 1870. 81. " A patent is never invalidated by the fact that the invention claimed in it was described, but not claimed, in a patent granted subsequent- ly to the making of the application for the pat- ent secondly issued, but before it was granted." —lb. 83. Complainants' patentee made his invention in 1835, and took his patent in 1851. The court held that " his poverty and not his will caused the delay," and of the invention said : " Where it had not been abandoned to the public, and had not been in public use or on sale with the consent and allowance of the inventor, no lapse of time, however protracted, barred an applica- tion for a patent, nor, after it had been granted, affected its validity." Wood et al. v. Cleveland 8 ABANDONMENT. Soiling Mill Co., 4 Fish. P. C. 550.— Swatnb, 1871. 83. An inventor filed his application for patent July 23d, 1855, and on August 35th, 1856, on appeal to the Commissioner of Patents, it was finally rejected. It stood thus until the early part of 1867, when the specification was amend- ed and its renewed consideration was urged upon the Patent Office. This effort resulted in the granting of the patent April 16th, 1867. De- fendant contended that the application was not completed and prepared for examination within the two years as required by the act of 1861. As the law permitted an inventor to show to the Commissioner's satisfaction that the delay was unavoidable, the court held that it must be as- sumed that such evidence was presented to the Commissioner, and that the Commissioner's de- cision thereon was conclusive. M'Millin et al. V. Barclay et al., 3 Pittsb. 377. — McKbnnait, 1871. 84. Abandonment " must result from the in- tention of the patentee, expressly declared, or clearly indicated by his acts." — lb. 85. If the lapse of two years between the date of application and the reissue of patent, and the appUcant's conduct, "can be fully explained upon any other hypothesis, they ought not to be imputed to an intention on his part to aban- don his invention. Tlie proof of actual abandon- ment, after application is filed, ought to be in- dubitably clear. It ought not to rest upon doubt- ful or disputable inferences."^ — lb. 86. An application for patent is conclusive evidence that the inventor does not intend to abandon his invention to the public, and " if an inventor has furnished, by his application for a patent, conclusive evidence that he does not in- tend to abandon his invention to the public, the disproof of his intention ought to be by evidence of equal weight and significance." — lb. 87. " The abandonment of an application amounts to nothing, unless it is in such wise as to become an abandonment of the invention to the public." Clark et al. v. Scott, 9 Blatch. 301. — Blatch. 1872. 88. " Lapse of time does not, perse, constitute abandonment. It may be a circumstance to be considered. The circumstances of the case, other than mere lapse of time, almost always give complexion to delay, and either excuse it or give it conclusive effect. The statute has made con- temporaneous public use, with the consent and allowance of the Inventor, a bar, when it ex- ceeds two years. But, in the absence of that, and of any other colorable circumstance, we .know of no mere period of delay, which ought. perse, to deprive an inventor of his patent." Bussell & Erwin M'fcj Co. v. Mallory et al., 10 Blatch. 140.— WooDKUFF, 1872. 89. A delay for the purpose of finding a man- ufacturer to test the utility of an improvement is excusable. — lb. 90. An abandonment to the public may occur within less than two years. " No particular time is necessary, but the fact must be proved, and the lapse of two years does not establish it. There may be sufficient reasons why a delay of a much gi-eater number of years will not so operate. On the question of abandonment, in either aspect, time, and circumstances, the acts and contemporaneous declarations of the party are all to be considered." — lb. 91. It is not safe to rest a conclusion of aban- donment on unsatisfactory testimony. — lb. 92. An inventor made application for patent, July, 1851 ; in the same montli the application was rejected ; in November, 1851, he requested and received $20 of the Government fee. In August, 1851, a second inventor applied for a patent on the same improvement, and received it in February, 1859 ; in October, 1866, said patent was reissued, suit was brought upon it, and it was held invalid on the ground that the inventor first mentioned was the prior inventor. In De- cember, 1869, the inventor first mentioned re- newed his application, and in November, 1870, the Commissioner of Patents rejected the claim on the ground of abandonment. The court sus- tained the Commissioner in his decision as to abandonment, holding that Section 35 of the patent law of 1870 did not help the case. Marsh V. Sayles et al., 3 Bissell, 321. — Dbummond, 1873. 93. " The issue of the letters-patent by the Patent Office is prima facie evidence that there has been no voluntary abandonment of his inven- tion to the public by tlie inventor, either before or after his application for letters-patent." Johnson v. Fassman et al., 1 Wood, 138. — Woods, 1872. 94 " After the issue of letters-patent, the abandonment must be shown to be positive, actual, and intentional by some act or declara- tion of the inventor, or be such gross laches as indicate unmistaliably an intention to abandon the invention to the public." — lb. 95. An appUcation for patent was rejected April 16th, 1857, and the patent granted October 23d, 1866. During the delay of over nine years, patents were issued to others for devices coming within the patent first mentioned. The inven- tion of the patent first mentioned was held not to have been abandoned. — lb. ABANDONMENT. 96. The inventor of the Nicolson pavement allowed six years to elapse, after putting down three forms of pavement, before he applied for his patent. In the absence of proof of intent to abandon, the court would not infer it. Am. Nicolson Pavement Co. v. City of Elizabeth et al., 6 Fish. P. C. 424.— Nixon, 1873. 97. "The question of diligence [in prosecut- ing an invention] is not an absolute, but a rela- tive one, and must be considered in reference to the subject-matter of the experiments." — lb. 98. " Mere forbearance to apply for a patent during the progress of experiments, and until the party has perfected his invention and tested its value by actual practice, affords no just grounds for any such presumption" [that of abandonment]. Jones et al. v. Bewail, 3 Cliff. 563.— Clifford, 1873. 99. " Abandonment or dedication of an in- vention to the public, being in the nature of a forfeiture of a right, is not favored in law. " — lb. 100. " Delays in the Patent Office, which an inventor cannot prevent, will not impair his title to his invention ; nor can any use of the inven- tion during such delays, if without his consent and allowance, afford any evidence to support the issue that the inventor abandoned the inven- tion to the public."— /J. 101. " No one but the inventor is competent to abandon his invention to the public His acts and declarations, if explicit, are sufficient for the purpose, or he may accomplish the same end by continual acquiescence in the acts of others, of which it appears that he had knowledge ; but the proof of knowledge must be beyond all rea- sonable doubt, as every presumption is the other way." — lb. 103. "When a party practices his invention merely for the purpose of experiment or com- pletion before he takes out a patent, the infer- ence that he intends to surrender the invention to the public does not arisQ, and, consequently, a dedication to the public cannot be proved by evidence that shows only experimental practice by the inventor or his employes, whether in public or private. Such an inference is never favored, nor will it, in general, be sufficient to prove such a defence, unless it appears that the use, exercise, or practice of the invention was somewhat extensive and for the purpose of gain, evincing an intent on the part of the in- ventor to secure the exclusive benefits of his in- vention without applying for the protection of letters-patent. ' ' — lb. 103. " Where the invention, by acts of the in- ventor, has gone into general public use and got beyond his control, without any effort on his part to restrain its general use, ... he cannot resume the ownership dedicated to the public, and ; . . his right to a patent is forfeited. " — lb. 104. The grant of an original patent with cer- tain claims raises no presumption that the in- ventor did not intend to make other claims which he subsequently does make in his reissue. Eickemeyer Hat-Blocking Maeh. Co. v. Pearce etal., 10 Blatch. 403.— Blatchford, 1873. 105. An inventor's application was not filed in the Patent Office for more than two years after its execution, but the delay was wholly due to the remissness of his solicitor. " The complainant was ignorant of any neglect, and could not be held responsible for any delay that occurred." Birdsall v. McDonald et al., 1 Bann. & Ard. 165.— Swatnb & Welker, 1874. 106. Cummings filed his caveat for dental vulcanite plate May 14th, 1853. He applied for a patent April 13th, 1855, which was rejected May 19th, 1856. In 1859 motion was made be- fore the Commissioner for a rehearing, or for an appeal to the Board of Examiners, which was denied. March 35th, 1864, a renewed ap- plication was filed and patent was issued June 7th, 1864. There was evidence of the poverty of the inventor, and evidence of efforts to raise money to forward his application during these periods. The invention went into public use about 1860. Abandonment held not to have oc- curred. Qoodyea/r Dental Vulcanite Co. et al. V. Boot, 1 Bann. & Ard. 384.— Hunt, 1874. 107. " If an inventor, without substantial rea- son or excuse, abandons the use of his invention, and for nine years sleeps on his rights, and in the mean time others, in good faith, employ their industry, skill, and money in producing the same thing, and give the public the benefit thereof, putting it into extensive use and on sale, such a, state of facts not only warrants the interference of abandonment by the first inventor, but it also creates, as between him and others, the same equity as would arise if such others had gone further and taken out a patent. Whether the device be patented, or has ' gone into use without a patent, ' should make no difference. . . . This is not because the lapse of time, 'per se, deprives I the inventor of his right, but because the cir- cumstances giving character to the delay indi- cate abandonment ; and also because the inter- vening rights of others make it inequitable that he should thereafter be permitted to assert any such exclusive title to the invention." Consoli- dated Fruit Jar Co. v. Wright, 13 Blatch. 149. — WOODRITPF, 1874. 107 a. A delay in taking out a patent after the completion of an invention by reason of ex- 10 ABANDOJSTMJINT. isting patents dominating the field does not work abandonment. Webster et al. v. New Bruiuwick Carpet Co., 1 Bann. & Ard. 84.— Nixon, 1874. 108. Applicant filed application for patent February 6th, 1856. It was rejected. He filed new application March 25th, 1864, and on that his patent issued. Between these two applica- tions the thing went into public use. The in- ventor was both poor and persistent. The court found abandonment not to have occurred. (xoodyear Dental Vulcanite Co. et al. v. Smith, 1 Holmes, 354.— Sheplet, 1874. 109. Cummings filed a caveat on his invention of dental vulcanite plate May 14th, 1852 ; he appHed for a patent April 12th, 1855, which ap- plication was rejected May 19th, 1855, again August 14th, 1855, and again February 6th, 1856 ; in 1859, motion for rehearing was denied. March 25th, 1864, renewed application was filed, and patent issued June 7th, 1864 ; meanwhile Cummings was poor and made efforts to raise money to prosecute his application ; the inven- tion went into public use in 1859. Cummings was held not to have abandoned. Ooodyear Dental Vulcanite Co. et al. v. Willis, 1 Flippin, 388. —Emmons, 1874. 110. " "Where successive applications are made in the procuration of a patent, and there is no proof of actual abandonment, the subsequent application will be deemed a continuation of the first."— /J. 111. The inventor applied for a patent in 1846, which was rejected July 27th, 1847, and then withdrawn. He made no subsequent effort to procure a patent. Nearly ten years afterward he assigned his right away for $5, and the patent was taken August 12th, 1856. He was held to have abandoned his invention. Lyman Ventilat- ing & Refrigerator Co. v. Lalor, 12 Blatch. 303. — Blatch. 1874. 112. The explanation of one's invention does not work abandonment thereof. Locomotive Engine Safety Truck Co. v. Penn. R. R. Co., 1 Bann. & Ard. 470.— Strong. 1874. 113. " An express relinquishment of an in- vention to the public is not indispensable to an abandonment. It may be inferred from long delay, unexplained, or from acts of the in- ventor inconsistent with any other theory, but it cannot be presumed from mere delay to apply isiv a patent, when the inventor is all the while perfecting the invention and testing its merits." —lb. 114. "Delays in the Patent Office which an inventor cannot prevent will not impair his title to his invention, nor can any use of his inven- tion during such delays, if without his consent and allowance, afford any evidence to support the idea that the inventor abandoned his inven- tion to the public." Henry v. PraTicestown Soap-Stone Stove Co., 2 Bann. & Ard. 321. — Sheplby, 1876. 115. " Mere forbearance to apply for a patent during the process of experiments, and until the party has perfected his invention and tested its value by actual practice, affords no just grounds for any presumption of abandonment or dedi- cation to the public." — /*. 116. Andrews, the inventor of the driven well, was colonel of a regiment in the Civil War. He permitted the use of his improvement in his camp at Portland, N. Y., and provided mate- rial wherewith to construct wells for iiis regi- ment when it should move into hostile territory. This was held not to constitute abandonment. Andrews et al. v. Ca/rman, 18 Blatch. 307. — Benedict, 1876. 117. For a statement of circumstances which excused a delay of some years in applying for a patent, see. — lb. 118. Cummings applied for his dental plate patent April 12th, 1855 ; the third rejection of his application was made February 3d, 1856. He renewed his application some years after- ward, and the patent was issued ; in the mean time he had been poor and had sought to get means to prosecute his application Held not to have abandoned. Smith v. Goodyear Dent. Vul. Co. et al., 93 U. S., 486.— Sup. Ct. 1876. 119. " Abandonment itself is a fact, and not a conclusion of positive law, statutory or com- mon, arising from any predescribed state of facts." Sprague et al. v. Adriance et al., 3 Bann. & Ard. 124.— Wheelbb, 1877. 120. " He who is silent when he should speak must be silent when he would speak, if he can- not do so without a violation of law and injus- tice to others. ' ' But a patentee is not called upon to speak against the infringement of his patent unless the knowledge of the infringement is brought home to him.— J6. 121. Waiting for nine years after invention before making application for patent unac- counted for, works abandondonment to the pub- lic. Consolidated Fruit Jar Co. v. Wright, 94 U. S., 93.— Sup. Ct. 1876. 122. " Inventors are a meritorious class. They are public benefactors. They add to the wealth and comfort of the community and promote the progress of civilization. A patent for an inven- tion is as much property as a patent for land. The right rests on the same foundation and is surrounded and protected by the same sanctions. There Is a like larger domain held in ownership ABANDONMENT. 11 for the public. Neither an individual nor the public can trench upon or appropriate what be- longs to the other. The inventor must comply with the conditions prescribed by law. If he fails to do this he acquires no title, and his in- vention or discovery, no matter what it may be, is lost to him, and is henceforward no more his than if he had never been in any wise connected with it. It is made thereupon, as it were, by ac- cretion, irrevocably a part of the domain, which belongs to the community at large." — Ih. 133. Cochran's application for patent was made January 11th, 1859, and rejected February 8th, 1859 ; February 20th, 1860, application was withdrawn and $30 refunded. May 6th, 1868, Cochran filed new application, which was re- jected on the ground of abandonment, which decision was affirmed by the Commissioner and reversed by the Supreme Court for the District of Columbia ; the Commissioner then declined to issue the patent, but after the passage of the act of July 8th, 1870, a new application was filed ' and patent issued. During the eight years be- tween the first rejection and the second applica- tion Cochran took twenty-two patents, nine of tliem for fire-arms. He was occupied after 1859 in perfecting and developing other inventions than that in controversy. In 1865 he sold an English patent for $18,000. During a portion j of tliis interval he was poor, in debt, and in ill health, but he prosecuted his other inventions with energy. Patents were granted to other parties in 1865 and 1866 for the improvement in controversy. Cochran was held to have abandoned between the rejection of February 8th, 1859, and the application of May 6th, 1868. ■['. S. Rifle & Cartridge Co. et al. v. Whitney Arms Co. et al., 14 Blatch. 94.— Shipman, 1877. 1 24. " The granting of a i^atent is prima facie, but not conclusive evidence that the right to the invention had not been surrendered to the public." — lb. 135. " The decision of the Commissioner in regard to abandonment, upon renewed applica- tions which were made under Section 35, has no higher authority or more enlarged scope than his decision upon the same question upon an original application, and ... all the de- fences which the statute authorizes may be made as well in respect to patents granted upon applications renewed after the act of 1870 as in respect to those issued upon original applica- tions." — lb. 126. "Lapse of time, per se, constitutes no abandonment, and . . . upon the defendants rests the burden of clearly establishing, by atflrmative evidence, a positive and actual aban- donment, or such laches as seem clearly to in- dicate an intent to abandon." — lb. 127. "An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law- is, that no such consequence will necessarily follow from the invention being in public use, or on sale, with the inventor's consent and al- lowance, at any time within two years before his application." Elizabeth v. Pavement Co., 97 U. S., 126.— Sup. Ct. 1878. 128. " Inventors may, if they can, keep their inventions secret, and if they do for any length of time, they do not forfeit their right to apply for a patent, unless another in the mean time has made the invention and secured by patent the exclusive right to make, use, and vend the pat- ented improvement. Within that rule, and sub- ject to that condition, inventors may delay to apply for a patent." Bates et al. v. Coe, 98 U. S., 31.— Sup. Ct. 1878. 129. " Inventors may, if they can, keep their invention secret, and if they do for any length of time, they do not forfeit their right to apply for a patent, unless another in the mean time has made the invention and secured by patent the exclusive right to make, use, and vend the pat- ented product. Within that rule, and subject to that condition, inventors may delay to ap- ply for a patent. ' ' Kelleher et al. v. Darling, 4 Cliff. 434.— Clifford, 1878. 130. The defence of abandonment cannot be made at a hearing on the merits unless the same was set up in the answer. Williams v. Boston & Albany E. B. Co., 17 Blatch. 31.— Wallace, 1879. 131. " Mere delay in enforcing equitable rights is not a defence to an action, except in cases where the statutes of limitation apply, or where the party has slept upon his rights and ac- quiesced for such a length of time that his claim has become stale. . . Neither does mere delay or acquiescence establish an abandonment or dedication of the patent. There must be an ac- quiescence in the appropriation of the right of such character as reasonably to induce the be- lief that the owner intended to relinquish it to the public use." — lb. 132. The inventor applied for a patent June 3d, 1848, and appointed an attorney, but did not give him usual authority. The application was rejected February 28th, 1849 ; the attorney with- drew the application in October, 1852, and re- ceived back |20 of the fee. In February, 1854, the inventor instructed another solicitor to call up and prosecute this rejected application. 12 ABANDONMENT. Through a misunderstanding this latter attorney- did not learn how the case stood until Septem- ber, 1854, and he stated to the inventor that the application was hopelessly abandoned. In 1869 the inventor heard that Mr. Fisher, then Com- missioner of Patents, had revised the former rule of prosecution arising out of neglect for two years, and the inventor then intended to apply again, but heard that Congress was about to pass a law to meet such cases and he waited for that— i.e., the law of 1870; the patent was issued April 29th, 1873. It was held that the inventor did not abandon his invention. Woodbury Pat- ent Planing Mach. Co. v. Keith, 4 Bann. & Ard. 100.— LowBLL, 1879. 133. Failure for two years, without excuse, • to prosecute an application for a patent works abandonment to the public of the invention. Planing Mack. Go. v. Keith, 101 V. S. 479.— Sup. Ct. 1880. 134. " An inYentor cannot without cause }'io\d his application pending .during a long period of years, leaving the public uncertain whether he intends to prosecute it, and keeping the fieldof his invention closed against other inventors. It is not unfair to him, after his application for a patent has been rejected and after he has for many years taken no steps to reinstate it or to renew it or to appeal, that it should be concluded that he has accpiesced in the rejection and aban- doned any intention of prosecuting his claim further. Such a conclusion is in accordance with common observation. Especially is this so when, during those years of his inaction, he has seen his invention go into common use, and neither uttered a word of complaint nor remon- strance, nor was stimulated by it to a fresh at- tempt to obtain a patent. ' ' — lb. 135. " It has sometimes been s.iid that an in- vention cannot be held to have been abandoned unless it was the intention of the inventor to abandon it. But this cannot be understood as meaning that such an intention must be ex- pressed in words." — lb. 136. By the court : " A question is made by the defendants whether an inventor is not to be presumed to abandon his design when he exhib- its it in the drawings of a mechanical patent. I do not see why this consequence should follow until the design has been in use for two years ; but I do not decide this point." Burton v. Greenville, 3 Fed. Rep. 643.— Lowell, 1880. 137. What is described but not claimed in the original patent is not thereby dedicated to the public so that it cannot be claimed in a reissue. Seldenetal.Y. Stockwell Self- Lighting Oas-Burner Co., 19 Blatch. 544.— Blatchfobd, 1881. 138. " Nothing but a clear mistake or inad- vertence and a speedy application for its correc- tion is admissible when it is sought merely to enlarge the claim." " The right to have it cor- rected " is " abandoned and lost by unreasonable delay. " " An omission to claim other devices or combinations apparent on the face of the pat- ent is in law a dedication to the public of that which is not claimed." [In the case in hand the delay was fifteen years.] Miller, E. & Co. V. Bridgeport Brass Co., 104 U. S. 350.— Sup. Ct. 1882.' 139. By the court : " If he was the author of any other invention than that which he specially describes and claims, though he might have asked to have it patented at the same time and in the same patent, yet if he has not done so, and afterward desires to secure it, he is bound to make a new and distinct application for that purpose, and make it the subject of a new and different patent. " James y. Campbell et al., 104 U. S. 356.— Sup. Ct. 1881. 140. In the case of a reissue with enlarged claims " it is competent for the courts to decide whether the delay was unreasonable and whether the reissue was therefore contrary to law and will." Miller,, E. & Co. v. Bridgeport Brass Co., 104 U, S. 350.— Sup. Ct. 1883. 141. An applicant for patent who allows' his application to lapse by two years' non-action I abandons thereby the application but not the invention. He can make a new application, but it will derive no support from the old one. Lindsay v. Stein, 30 Blatch. 370. — Blatch- PORD, 1882. 143. An inventor filed application for patent December 37th, 1865, which w'as rejected. An amendment to the application was filed May 5th, 1869, after evidence being laid before the Com- missioner that the delay had been caused by the fact that the applicant had been ' ' generally in- capacitated for business by mental disorder." Thereupon the Commissioner allowed the patent, and the court held abandonment had not taken place. Ballard et al. v. City of Pittsburg, 13 Fed. Rep. 783.— McKeknan, 1883. 143. "Nearly thirteen years elapsed before the application [for reissue] was made. If the matters described in the additional claims were a part of the original invention (as has been con- ceded), and were omitted through ' inadvertence, accident, or mistake,' it is impossible to believe that he did not discover the omission much ear- lier. In the language of the court in Miller v. Brass Co., it plainly appears on the face of his patent, and must have been seen on opeijiing the paper." ABANDONMENT. 13 " The patentee knew what he had invented ; must necessarily have understood its scope and extent. He may not have comprehended all the uses to which it might eventually he applied. " But to secure a different use simply does not require a different or additional claim. What he did not, he must be regarded, in view of his subsequent conduct, as intending to dedi- cate to the public. He cannot, therefore, after others have acted upon what he thus did, be allowed to change position, and thereby sup- press their enterprises and destroy their business. This application of the equitable doctrine of estoppel has more than once been suggested by the Supreme Court, and is announced and ap- plied in Miller v. Brass Co. above cited. ' ' Com- bined Patents Can Co. v. Lloyd, 11 Fed. Rep. 149.— Butler & McKennan, 1883. 144. " When a patent fuUy and clearly, with- out ambiguity or obscurity, describes and claims a specific invention complete in itself so that it cannot be said to be inoperative or invalid by reason of a defective or insufficient specifica- tion, a reissue cannot be had for the purpose of expanding or generalizing the claim so as to make it embrace an invention not described and specified in the original." James v. Campbell et al, 104 U., S. 356.— Sup. Ct. 1881. 145 Thirteen years after issue, complainant's patent was reissued with enlarged claims, evi- dently [from the language of the court] to cover something that had not originally occurred to the inventor, and to cover some business devel- oped since the issue of the original patent. Held, that reissues with enlarged clainais are lawful under " proper circumstances ;" but that by his delay the patentee had dedicated what he orig- inally failed to claim to the public. Combined Patents Can Co. v. Lloyd, 21 O. G. 713.— But- ler & McKestnan, 1882. 146. By the court : " It was not necessary for the patentees. Rose and Matthews, to enumerate all the known functions of these frost-jackets on their original patent ; and as no claim was based upon them it could not be hurtful to enumerate them in the reissued patent. But the complain- ants, in their reissued patent, have split up and divided the elements of their invention, and claimed them separately, and not as a combina- tion. Of course this enlarges the scope of their patent. " The separate claims embrace fewer elements in combination than were embraced in the claim of the original patent. No one could infringe the original ijatent unless he used all the elements of the combination. ' Any one will infringe the reissue who uses any of those elements which are now separately claimed. ... " It cannot be denied that each of these sepa- rate claims is much broader than the claim in the original patent, and they are put forth in the reissue fourteen years after the original patent was granted. "The latter showed on its face that these broad claims were not made, and if the patentees were really the inventors of an independent jacket standing loosely on the elbow of the main, when apprised that it was not claimed in the patent they ought to have used due diligence in surrendering it and having the mistake cor- rected. " The case clearly comes within the ruling lately made in Miller v. The Bridgeport Brass Co." Matthews et al. v. Boston Maeh. Co. et al., 105 U. S. 54.— Sup. Ct. 1882. 147. By the court : " I am much inclined to think that the mere fact that a new article is shown in the drawings of a patent for a machine would not of itself be an abandonment of the new article, which would properly be the sub- ject of a different patent, until the statutory for- feiture of use for two years had been incurred. " Hatch et al. v. Moffitt, 15 Fed. Rep. 252.— Low- ell, 1883. 148. Colonel Green, patentee of the driven well, put his invention into use for the benefit of his regiment in 1861. He took his patent in 1866. Held, that he abandoned his invention to the public. Andrews et at. v. Hoiiey, 5 Mc- Crary, 181.— Shibas, 1883. 149. Colonel Green put his invention in driven wells into practical use for the benefit of his regiment in 1881. He applied for his patent in 1866. Being involved in personal troubles with one of his officers was held not to excuse the delay. —lb. 150. Where a patentee's patents " are being used without his knowledge in such a manner that the business for the benefit of which the invention was made is not being injured or in- terfered with, and where his ignorance in regard to the use arises from an indifference to infringe- ment by persons who, he supposes, are not in his .line of business," the patentee is not charge- able with abandonment of his invention. iV. T. Orape Sugar Co. v. Buffalo Orape Sugar Co. et al., 21 Blatch. 519.— Shipman, 1883. 151. A patentee may claim in his later patent what was described but not claimed in his ear- lier patent. So held in a case wh§re the later patent was applied for after the issue of the ear- lier patent. Vt. Fa/rm. Maeh. Co. et al. v. Mar- ble Oom'r, 23 Blatch. 33.— Wheeler, 1884. 14 ABANDONMENT. 152. Complainant's patent in suit was for lap- ping two pieces of leather in making the seam of a hoot — or any other work of the kind — running a line of rivets along, and then a line of stitching on each side of the line of rivets, so as to make a complete tight seam. Complainant had a prior patent showing the same seam with a strip of India rubber inserted. It was held that if the prior patent had been the patent of another person the later patent would be void, but that under the circumstances the second patent was in the nature of a claim which might have been made in the first patent, and was therefore valid. Cahn v. Wong Town On, 9 Sawyer, 630.— Sawyer, 1884. 153. A patentee cannot claim in a subsequent patent what he has shown but does not claim in his earlier patent. Swift v. Jenka et al., 19 Fed. Eep. 641.— CoxE, 1884. 154. Proof of abandonment ought to be satis- factory in its nature in order to be available. Bayer v. OhicagoM'f'J Co., 20 Fed. Rep. 853. — Dkdmmond, 1884. 155. " The right which the public has ac- quired to use the thing invented, by reason of the applicant for a patent failing to do some- thing prescribed by Congress and the necessity for which Congress might, by previous legisla- tion, have dispensed with, has never been held to be a vested right." Qraham et al. v. Joh-a- ston ct al., 21 Fed. Bep. 40.— Morris, 1884. 1 56. A prior patent to the same patentee Show- ing and describing but not claiming the im- provement claimed in the patent in suit was mentioned by the court as if , as a matter of course, it did not affect the validity of the pat- ent in suit. Eatey et al. v. Burdett, 109 U. S. 633.— Sup. Ct. 1833. 157. When a patentee's later patent claims what was described in his former patent, but the application for the later patent was on file when the earlier patent was granted, the earlier patent has no effect upon the validity of the later pat- ent. Sailway Begister H'fg Co. v. Broadway & Seventh Am. B. B. Co., 30 O. G. 180.— Whbblbr, 1884. 158. Complainant filed his application for pat- ent October, 1877, and on December 2d, 1877, the patent was allowed with certain claims ; but, as was claimed, by neglect of his solicitor the final fee to the Patent Ofiice was not paid, and the right to the patent lapsed. Sometime in Febnlary, 1879, he renewed his application and asked that the original specification and draw- ings might be considered as a part of the re- newed application, and thereon his patent was issued May 30th, 1879. Thereupon the court said : " The application made by "Weir in Feb- ruary, 1879, must, as it seems to me, be consid- ered as the first application, the former applica- tion going for naught and leaving him to stand upon that application, as made at the time he renewed it, upon his old specifications and drawings." Weir v. Morden, 21 Fed. Bep. 243. — Blodgett, 1884. 159. A patent was taken May 28th, 1867. The conception of the invention was made in 1860. By reason of poverty, sickness, and lunacy this delay was excused and the invention held not to have been abandoned. Celluloid M'fg Co. V. Crofut et al., 24 Fed. Bep. 796.— Nixon, 1885. 160. A patentee by disclosing in his patent features of invention which he does not claim thereby dedicates such features to the public. (This was said of a second application made within two years of the date of the patent al- ready granted:) Billet al. v. Com'r of Patents, 33 O. G. 757.— Cartter, 1885. 161. "If it were true that complainants had previously obtained a patent for this same in- vention, secured to them by the patent in suit, and that this prior patent had expired, it would doubtless be a complete answer to the bill, since a man cannot have two patents for the same in- vention. . . And this disability extends not only to what is claimed in the first patent but to that which is described therein as the patentee's invention. If a man cannot have a patent for what another has claimed or described in a prior patent, much less can he have one for what he hipiself has described, for he thus shows that he has anticipated himself." Matthews et al. v. Floweret al., 33 O. G. 887.— Brown, 1885. 162. " One reason why a patentee cannot have a valid reissue to cover parts of his invention described but not claimed, when the omission to make the claim is not caused by inadvertence, accident, or mistake, is because the parts of the invention not claimed are, by this cause, aban- doned to the public, and the right to claim them is gone." Bailway Begister M'fg Co. v. Broad- way & Seventh Ave. B. B. Co., 34 O. G. 921.— Wheeler, 1886. 163. ' ' The defence of abandonment to the public is not confined to reissued patents, but is given generally by the statute to all patents." —Ih. 164. The fact that a patentee has in his jDrior patent shown a feature analogous in function and operation to the patented feature of his later patent does not invalidate the later patent. Wil- son V. OuMey et al., 35 O. G. 257. — Blodgett, 1886. 165. "If it appears that the inventor, after ABANDONED APPLICATION. 15 applying for a patent and thereby irretrievably committing himself to the proposition that his invention is ripe for introduction to the public, accepted the decision rejecting his application and cast aside his invention as of no longer any value to him, he thereby makes it forever public property, and it is not in his power to take it back and make it his own again. ' ' Consolidated Fruit Jar Co. v. Bellaire Stamping Co., 35 O. G. 627.— Sage, 1886. 166. "The decision of the Commissioner in favor of the applicant, upon the question wliether the invention has been abandoned, is not con- clusive, but may be contested and reviewed in a suit brought for the infringement of the patent. ' ' V. 8. Rifle & Cartridge Co. et al. v. Wliit- ■ney Arms Co. et al., 118 U. S. 33.— Sop. Ct. 1886. 167. " There may be an abandonment of the invention to the public as well after an applica- tion has been rejected or withdrawn as before any application is made. Such abandonment may be proved either by express declaration of an intention to abandon, or by conduct incon- sistent with any other conclusion. An inventor whose application for a patent has been rejected, and who without substantial reason or excuse omits for many years to take steps to reinstate or renew it, must be lield to have acquiesced in its rejection and to have abandoned any inten- tion of further prosecuting his claim. " — lb. 168. " A patentee cannot claim the same thing described by him in a prior patent in which there is no reservation, and what he omitted to claim and reserve in a prior patent in which the inven- tion was described he dedicates to the public." Adams v. Bellaire Stamping Co. et al., 36 O. G. 567.— Jackson, 1886. 169. An application for patent was filed November 28th, 1865. On December 17th, 1869, a new claim was inserted and issued with the patent. For more than two years prior to the insertion of this claim, articles embodying all its elements had, with the knowledge and consent of the patentee, been bought and sold in the market. It was held that the right to make such claim had been abandoned. Kittle v. Hall et al., 39 Fed. Rep. 508.— Coxb, 1887. 170. Letters-patent for an improvement in lu- bricators were granted March 31st, 1883. What was claimed in the latter patent was described — without substantial difference — but not claimed in the earlier patent. It was held that the description without claim in the earlier patent worked abandonment. Swift v. JenJcs et al., 38 O. G. 1017.— Coxb, 1887. 171. Of a reissue the Supreme Court said : " There is no evidence of any attempt to secure by the original patent the invention covered by the first eight claims of the reissue, and those in» ventions must be regarded as liaving been aban- doned or waived, so far as the reissue in ques- tion is concerned, subject, however, to have made a new application for a patent to cover them ; in other words, those eight claims are not for the same invention which was originally patented." Parker & Whipple Co. etaV.^. Yale Clock Co. et al., 41 O. G. 811.— Sop. Ct. 1887. 173. Ten years' delay in applying for patent, while in possession of means, and not otherwise satisfactorily explained, works abandonment. Carrier et al. v. Weyrichet al., 31 Fed. Eep. 607. — Gebsham, 1887. 173. " Description in a prior patent does not, of itself alone, invalidate a subsequent patent for the invention so described, applied for in due season." Holmes Electric Protective Co. v. Metropolitan Burglar Alarm Co., 31 Fed. Rep. 563.— Whebler, 1887. 174. The Green driven- well patent was dated January 14th, 1868. He appears to have first made such a well in 1861. For a condition of facts which excused him as regards abandon- ment and as regards prior public use, see — . 131 U. S. 71, 39 O. G. 1336.— Sup. Ct. 1887. 175. " The act of 1839, as has repeatedly been held, has no effect to invalidate a patent, unless there be proof of abandonment or a use of the invention for more than two years prior to the application for the patent." — lb. ABANDONED APPLICATION. This title refers to the abandonment of an ap- plication for a patent. Its practical discussion in the courts has been mainly in connection with the question of two years' public use of an in- vention prior to the -application for patent there- for ; and then the precise question has been whether there was reasonable continuity between consecutive applications for patents on the same invention so that they might be considered as one continuous application. The cases that per- tain to this topic are therefore in the main com- prised under the title of " Public Use — Two Years." "Abandoned Application" in the Pat- ent Acts. Act approved March 3d, 1861. Section 13. And be it further enacted. That all applications for patents shall be completed and prepared for examination within two years 16 ADMINISTEATOE AND EXBCUTOE. after the filing of the petition, and in default thereof they shall be regarded as abandoned by the parties thereto ; unless it be shown to the sat- isfaction of the Commissioner of Patents that such delay was unavoidable. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 33. And ie it further enacted, That all applications for patents shall be completed and prepared for examination within two years after the filing of the petition, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the ap- plicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the sat- isfaction of the Commissioner that such delay was unavoidable. Sec. 35. A-iid be it furtlier enacted. That any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to is- sue upon the payment of the final fee, but who has failed to make payment thei'eof within six months from the time at which it was passed and allowed, and notice thereof was sent to the ap- plicant or his agent, shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application : Provided, That the second applica- tion be made within two years after the allow- ance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent, as aforesaid, was ordered to is- sue prior to the issue thereof : And p)-(mided further. That when an application for a patent has been rejected or withdrawn prior to the pas- sage of this act, the applicant shall have six months from the date of such passage to renew his application, or to file a new one ; and if he omit to do either, his application shall be held to have been abandoned. Upon the hearing of such renewed applications abandonment shall be considered as a question of fact. [Repealed June 23d, 1874] Act approved June 22d, 1874. Sec. 4885. Every patent shall bear date as of a day not later than six months from the time at which it was passed and allowed and notice thereof was sent to the applicant or his agent ; and if the final fee is not paid within that period, the patent shall be withheld. Sec. 4894. All applications for patents shall be completed and prepared for examination within two years after the filing of the applica- tion, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties there- to, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable. Sec. 4897. Any person who has an interest in an invention or discovery whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such in- vention or discovery the same as in the case of an original application. But such second appli- cation must be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the issue of the patent. And upon the hearing of renewed applications preferred under this section, aban- donment shall be considered as a question of fact. Cases. See "Abandonment," paragraphs 81, 34, 58, 67, 83, 87, 103, 110, 123, 125, 138, 134, 141, 158, 169. See "Application for Patent," paragraphs 44, 45, 57, 60, 68. See "Public Use— Two Years," paragraphs 33, 39, 46, 53, 54, 56, 57, 58, 68, 70, 75, 78, 93, 93, 94, 105, 111, 137, 169, 185. ABANDONED EXPERIMENT. [See Prior Use — Abandoned Experiment.] ADMINISTRATOR AND EXECUTOR. " Administkator and Executor" in the Patent Acts. Act approved April 17th, 1800. Section 3. And be it further enacted. That where any person hath made, or shall have made, any new invention, discovery, or improve- ment, on account of which a patent might, by virtue of the above-mentioned act, be granted to such person, and shall die before any patent shall be granted therefor, the right of applying for and obtaining such patent shall devolve on ADMINISTEATOE AND EXECUTOE. 17 the legal representatives of such person in trust for the heirs at law of the deceased, in case he shall have died intestate ; but if otherwise, then in trust for his devisees, in as full and ample manner, and under the same conditions, limita- tions, and restrictions as the same was held, or might have been claimed or enjoyed by such person, in his or her lifetime ; and when appli- cation for a patent shall be made by such legal representatives, the oath or affirmation, provided in the third section of the above-mentioned act, shall be so varied as to be applicable to them. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 10. Andbe it furtlier enacted. That where any person hath made, or shall have made, any new invention, discovery, or improvement, on . account of which a patent might by virtue of this act be granted, and such person shall die before any patent shall be granted therefor, the right of applying for and obtaining such patent shall devolve on the executor or administrator of such person, in trust for the heirs at law of the deceased, in case he shall have died intestate : but if otherwise, then in trust for his devisees. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 84. And be it further enacted. That when anyv person, having made any new invention or discovery for which a patent might have been granted, dies before a patent is granted, the right of applying for and obtaining the patent shall devolve on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate ; or if he shall have left a. will, disposing of the same, then in trust for his devisees in as full manner and on the same terms and conditions as the same might have been claimed or enjoyed by him in his life- time. . . [Repealed June 22d, 1874.] Act approved June 23d, 1874. Sec. 4896. When any person, having made any new invention or discovery for which a pat- ent might have been granted, dies before a pat- ent is granted, the right of applying for and ob- taining the patent shall devolve on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate ; or if he shall have left a will, disposing of the same, then in trust for his devisees, in as full manner and on the same terms and conditions as the same might have been claimed or enjoyed by him in his lifetime ; and when the applica- tion is made by such legal jepresentatives, the oath or affirmation required to be made shall be so varied in form that it can be made by them. (As to right of administrators and executors to take reissues, see "Reissue" in the Patent Acts.) Cases. 1. By the court : " There is no express statu- tory provision authorizing the administrator of the patentee to apply for a renewal of the pat- ent. " [Said in 1848.] By the court [on motion to dissolve provisional injunction] : " Upon the whole, and for the purposes of this motion, I shall consider the extension of the patent as having been legally granted." Brooks et al. V. Bicknell et al., 3 McLean, 250. — McLean, 1843. 2. The grant of an extension of a patent to an administrator is within the statute of 1836. Washburn et al. v. Gould, 8 Story, 133. —Story, 1844. 3. Extension of a patent in the name of the administrator is within the spirit and policy of the act of 1836. Brooks et al. v. Jenkins et al. , 3 McLean, 432.— McLean, 1844. 4. The ownership of a patent in the hands of an administrator is a unit extending throughout the United States which he has power to sell within a State the same as any other personal, property of the estate, and the right may be conveyed in parts so as to satisfy purchasers. — - lb. 5. An administrator is competent to apply for and receive a patent. Woodioorih v. Sherman, 3 Story, 171.— Stort, 1844. 6. An administrator may properly apply for and receive an extension of the letters-patent of the deceased. Wilson v. Bousseau, 4 Howard, 646.— Sup. Ct. 1846. 7. Where a patent issues to an administrator, that is sufficient evidence of the grant of admin- istration, and it is not competent for a court to further inquire into the matter. Woodworth et al. V. Hall et al., 1 W. & M. 248.— Woodbury, 1846. 8. An administrator may lawfully surrender a patent for reissue. Smith et al. v. Mercer et al. , 3 Penn. L, J. Rep. 526.— Kane, 1846. 9. An administrator may sue, as such, upon a patent which he holds as such, in any circuit court. — lb. 10. Title derived through a foreign adminis- trator is a good title. Smith et al. v. Plympton et al., 4 West. L. J. 49.— Kane, 1846. 11. Where there is more than one adminis- trator on the estate of a patentee and one of them makes an assignment of his patent, the assignment is valid. Wintermute v, Bedington, 1 Fish. P. C. 339.— Wilson, 1856. 18 ADMINISTEATOE AND EXECUTOR. 12. " An administrator of a patentee residing in one state may commence an action in tlie United States Circuit Court of another state for tlie recovery of damages for an infringement, without taking out letters of administration in the latter state. ' ' Ooodyear et al. v. HulUhen etal., 2 Hughes, 492.— Jackson, 1867. 13. " The administrator is a trustee holding the legal title, and the patent is not assets in his hands belonging to the personal estate of the in- testate, but is a franchise granted to the admin- istrator, for the benefit of the heirs at law or the devisees of the deceased inventor. There is, therefore, no reason for requiring him to quali- fy" under a state law. — lb. 14. "The titles to patents for inventions are regulated by acts of Congress. By those acts the interest of the patentee passes to the personal representative in the state of the domicile, and remains in him until assignment to the parties beneficially interested therein, or to the vendee thereof in case of sale in course of administra- tion." Hodge et al. v. No. Mo. JR. B., 1 Dillon, :i04.— Trbat, 1869. 15. " Charles Goodyear, deceased, by his will appointed his son, Charles Goodyear, Jr., his wife, Fanny Goodyear, and James A. Dorr his executors. The will provided that a majority of the executors should decide all questions that might arise ; that the acts of the majority should be as binding as the acts of all ; that if at any time there should be but two, they might appoint a third ; and that if there should be but one, he might appoint another. The manner of ap- pointment in both cases was specified. ' ' Charles Goodyear, Jr., alone as executor, brought suit, and it was held that he had that right. Bub- ber Co. v. Goodyear, 9 Wall. 788.— Sdp. Ct. 1869. 16. TJie rule as to administrators and execu- tors in courts of equity is not different from the rule in the courts of law. " Neither can recog- nize the authority of an executor any more than that of an administrator, and neither will aid him to obtain possession and control of the estate, until he has fulfilled the conditions and given the guarantees of fidelity and solvency prescribed by the local law. A different rule could hardly fail to be followed by the most mischievous con- sequences. ' ' — 1 b. 17. " It is difficult to see any solid objection to the power of " an " executor or administrator to make the surrender and obtain the reissue. ' ' Carew et al. v. Boston Elastic Fabric Co. , 3 Cliff. 356.— Cliffokd, 1871. 18. A license to a person for a specified term of years passes to the licensee's administrator upon his death. Oliver et al. v. Morgan, 10 Heiskel, 322.— Nicholson, 1872. 19. A defendant died pending suit ; thereof the court said : "No injunction can issue against the defendant, and as there is no proof of infringe- ment by the executor, none can issue against him. No discovery is prayed for against the ex- ecutor, and there is no presumption of any knowledge by him of his testator's acts. When the title to the principal relief which is the prop- er subject of a suit in equity — the injunction and discovery — fails, the incident right to an ac- count fails also. ' ' Draper v. Hudson, 1 Holmes, 208.— Sheplet, 1873. 30. Grant of letters of administration by a court having jurisdiction is conclusive as to the administrator's right to the grant. Northwest- ern Fire Extitiguislier Co. v. Philadelphia Fire Extinguisher Co., 1 Bann. & Ard. 177. — Mc- Kennan, 1874. 21. "The act of Congress [Brightley's Dig., Section 39] imposes upon a patent issued to the administrator of a deceased inventor, a trust in favor of his heirs. But it is not essential to the validity of the patent, or to the efficacy of the trust, that the persons to whose benefit the pat- ent will inure should be named upon the face of it."— iJ. 22. " The act of Congress . . . provides that the administrator of the deceased inventor shall hold the patent granted to him, ' under the same conditions, limitations, and restrictions, as the same was held, or might have been claimed or enjoyed ' by the inventor in his lifetime. The import of this provision is that, while the legal title to the invention is devolved upon the ad- ministrator, he must take and hold it subject to any equities existing as against the inventor in his lifetime. ' ' — lb. 23. " The equitable liability of an infringer is clearly not determined by his death, and a bill of revivor against his personal representatives will lie to prevent the abatement of the suit brought in his lifetime to enforce it." Smith V. Baker's Administrator, 1 Bann. & Ard. 117. — McKennan, 1874. 24. Where A has an assignment under a pat- ent which is of record, that record is construc- tive notice of A's rights, although the assignor may have conveyed her title as administratrix when she was, in fact, an executrix. Newell et al. V. West et al., 13 Blatch. 114. — Wallace, 1875. 25. An assignment of a patent made by an executrix, although she signs as administratrix, is valid to convey the title. — lb. 26. The statutes of Massachusetts enacted AGGEEGATION. 19 " that, on the application of an administrator, or executor, or any person interested in the estate, the Probate Court may order any part or all of the personal estate to be sold at public auc- tion or at private sale, and, in that event, the administrator nliall account therefor at the price for which il sells." An executrix made a sale of a patent without such an order. In the ab- sence of any statutory limitation the court as- sumed that she had the same power that execu- tors have at law. — lb. 37. A man died leaving a wife and daughter. The wife was his executrix, and as such sold and assigned away a patent which he had. The daughter did not join in the assignment, and it was held that she need not join in order to make the transfer good. — Ih. 28. After a decree adjudging infringement and referring the case to a master for an ac- counting, the respondent died. It was " Held, 1. That although, as a general rule, actions for tort do not survive against the representatives of defendants deceased pending the suit, yet these proceedings in equity for infringement of pat- ents are not strictly proceedings in tort. The respondent who infringes a patent is held in equity as a trustee of the owner of the patent, and compelled to account to him for the profits realized from the manufacture of the infringing machines or products. The infringer is also liable to the patentee for damages for such in- fringement, and both these causes of action are combined in the case in equity, as well as the prayer for perpetual injunction. 3. That in this case, the decree having settled the question of infringement, and the case having been re- ferred to a master, before the death of the re- spondent, to ascertain the amount for which the decree should be rendered, which will embody either both or one of the claims of complainant, therefore, the action does survive." Atterbury V. QUI, 3 Flippin, 239 — Welker, 1877. . 39. Where, pending a suit against him, re- spondent dies, under Rule 56 the suit is not revived unless order to that effect is made. — Ih. 30. " The right to file a bill of revivor is con- fined to cases of representation of the party de- ceased by the mere appointment and operation of law. ... On the other hand, there may be a priority of right and title, under the deceased, by a transfer or conveyance of that right to a person who is not in by mere operation of law, and is not the heir or personal representative of the deceased, and in such a case a bill of revivor will not lie." Metal Stamping Co.Y. Crandall, 18 O. G. 1531.— Wallace, 1880. 31. An administrator cannot be sued in that capacity as an infringer. Thompson v. Canter- bury, 2 McCrary, 332.— McCraky, 1881. 32. Where a license runs to the administra- tors, executors, and assigns of the parties of the second part, it plainly provides for a devolution or transfer of the title in severalty. Adams et al. V. Howard etal., 33 Blatch. 37. — Wallace, 1884. 33. "A patent right, like any other personal property, is understood by Congress to rest in the executor and administrator of the patentee, if he has died without having assigned it." Shav) Belief Valve Co. v. New Bedford, 19 Fed. Rep. 753.— Lowell, 1884. 34. On the death of a patentee the patent be- comes the property of his heirs, to be disposed of by the administrator or executor. Bradley et al. V. Drell et al., 19 Fed. Rep. 913.— Achbson, 1884. 35. Ownership and interest in a patent de- scends to the administrator and not to the heirs, and is to be administered the same as all other personalty of the deceased. Hewitt et al. v. Pa. Steel Co., 31 O. G. 1687.— Butler, 1885. 35 a. An assignment of a license by the widow of the deceased owner — it not appearing that s lie is administratrix — does not avail to pass (lie title to such license. Creecy v. United States, il N. & H. 3.— NoTT, 1885. 36. It is expressly provided by the thirty-fi fst section of the judiciary act of 1789, that the courts are authorized to hear and determine a cause and proceed to judgment therein for or against an executor or administrator, as the case may be, after the death of a party ; and a bill of revivor is the proper mode of preserv- ing and continuing the original suit. Kirk V. Du Bois, 38 Fed. Rep. 460.— McKennan, 1886. 37. " A patentee's right of action for an in- fringement of his patent survives to his personal representatives ; and it is well settled that his executor or administrator may not only sue on such cause of action, but may assign or transfer the same to another. A patent-right, with all the incidents arising from infringements there- of, is personal property, and goes upon the death of the patentee, assignee, or grantee, to his executor or administrator." May v. Logan Co., 30 Fed. Rep. 350.— Jackson, 1887. AGGREGATION. See " Combination— Unpatentable." 20 ALIEN INVENTOR. ALIEN INVENTOR. "Alien Inventor" in the Patent Acts. Act approved April 17th, 1800. Section 1. Be it enacted by the Senate and, House of Representatives of the United States of America in Congress assembled. That all and singular the rights and privileges given, intended or provided to citizens of the United States, re- specting patents for new inventions, discoveries, and improvements, by the act intituled " An act to promote the progress of -useful arts, and to repeal the act heretofore made for that purpose, ' ' shall be, and hereby are, extended and given to all aliens who at the tinie of petitioning in the manner prescribed by said act, shall have resided for two years in the United States, which priv- ileges shall be obtained, used, and enjoyed by such persons, in as full and ample manner, and under the same conditions, limitations, and re- strictions, as by the said act is provided and di- rected in the case of citizens of the United States : Provided always. That every person petitioning for a patent for any invention, art, or discovery, pursuant to this act, shall make oath or affirma- tion before some person duly authorized to ad- minister oaths before such patent shall be grant- ed, that such invention, art, or discovery hath not, to the best of his or her knowledge or be- lief, been known or used either in this or in any foreign country, and that every patent which shall be obtained pursuant to this act, for any invention, art, or discovery, which it shall after- ward appear had been known or used previous to such application for a patent, shall be utterly void. [Repealed July 4th, 1836.] Act approved July 13th, 1882. Be it enacted by tJie Senate and Souse of Repre- sentatives of i!i£ United States of America in Con- gress assemfiled. That the privileges granted to the aliens described in the first section of this act, to extend the privilege of obtaining patents for useful discoveries and inventions to certain per- sons therein mentioned, and to enlarge and de- fine the penalties for violating the rights of pat- entees, approved April seventeenth, eighteen hundred, be extended in like manner to every alien who, at the time of petitioning for a pat- ent, shall be resident in the United States, and shall have declared his intention, according to law, to become a citizen thereof : Provided, That every patent granted by virtue of this act and the privileges thereto appertaining, shall cease and determine and become absolutely void with- out resort to any legal process to annul or cancel the same in case of a failure on the part of any patentee, for the space of one year from the is- suing thereof, to introduce into public use in the United States the invention or improvement for which the patent shall be issued ; or in case the same for any period of six months after such in- troducticta shall not continue to be publicly used and applied in the United States, or in case of failure to become a citizen of the United States agreeably to notice given at the earliest-period within which he shall be entitled to become a citizen of the United States. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 9. And be itfurtlier enacted, That before any application for a patent shall be considered by the Commissioner as aforesaid, the applicant shall pay into the Treasury of the United States, or into the Patent Office, or into any of the de- posit banks to the credit of the Treasury, if he be a citizen of the United States, or an alien, and shall have been resident in the United States for one year next preceding, and shall have made oath of his intention to become a citizen thereof, the sum of thirty dollars ; if a subject of the King of Great Britain, the sum of five hundred dollars ; and all other persons the sum of three hundred dollars. Sbc. 15. (This act provides as a defence to an action for infringement of a patent : ' ' That the patentee, if an alien at the time the patent was granted, had failed and neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, the invention or discovery for which the patent issued. ' ') [Repealed July 8th, 1870.] Act approved March 3d, 1837. Sec. 13. And be it furtlier enctcted. That, wherever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, pursuant to Section 7 of the act to which this is addition- al, the certificate thereof of the Commissioner shall be a sufficient warrant to the treasurer to pay back to such applicant two thirds of the duty he shall have paid into the Treasury on account of such application. [Repealed July 8th, 1870.] [Statutory provisions regarding aliens in con- nection with " Caveats" and " Design" patents will be found under those titles.] Cases. 1. As to public use, citizens and aliens stand on the same footing. [Invention patented in 1832.] SJiaw V. Cooper, 7 Peters' C. C. 392. — Sup. Ct. 1838. 2. " The alien clause in Section 15 of the act of 1886 applied only to alien patentees, and not to ANNULMENT OF PATENT. 21 American patentees who became such as assign- ees of alien inventors, under Section 6 of the act of March 3cl, 1837." Tatham et al. v. Lowber et al., 3 Blatch. 49.— Nelson and Betts, 1847. 3. On November 13th, 1844, one Mini, an alien not naturalized in the United States, took a patent, on the allegation that he was a citizen of the United States, the fees for citizens and aliens being widely different. Seven years af- terward he procured a reissue in which the de- fect was attempted to be cured. -It was held that the reissue was invalid. Mini's Assignee v. Ohild, 3 "Wall. Jr. 30.— Griee, 1854. 4. A patent taken by an alien, as the law was in 1844, on the basis of his being a citizen, the fees in the two cases being widely different, is void. — lb. ANNULMENT OF PATENT. '"Annulment of Patent" in the Patent Acts. Act approved April 10th, 1790. Section 5. And be it further enacted. That upon oath or affirmation made before the judge of the district court where the defendant resides, that any patent which shall be issued in pur- suance of this act was obtained surreptitiously by, or upon false suggestion, and motion made to the said court, within one year after issuing the said patent, but not afterward, it shall and may be lawful to and for the judge of the said district court, if the matter alleged shall appear to him to be sufficient, to grant a rule that the patentee or patentees, his, her, or their executors, administrators, or assigns, show cause why proc- ess should not issue against him, her, or them, to repeal such patent ; and if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued as aforesaid against such patentee or patentees, his, her, or their executors, administrators, or assigns. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the first and true inventor or discoverer, judgment shall be rendered by such court for the repeal of such patent or patents ; and if the party at whose complaint the process issued shall have judgment given against him, he shall pay all such costs as the defendant shall be put to in defending the suit, to be taxed by the court, and recovered in such manner as costs ex- pended by defendants shall be recovered in due course of law. [Repealed February 21st, 1793.] Act approved February 31st, 1793. Sec. 10. And be it further enacted, That upon oath or affirmation being made before the judge of the district court where the patentee, his ex- ecutors, administrators, or assigns, reside, that any patent, which shall be issued in pursuance of this act, was obtained surreptitiously or upon false suggestion, and motion made to the said court, witliin three years after issuing the said patent, but not afterward, it shall and may bo lawful for the judge of the said district court, if the matter alleged. shall appear to him to be suffi- cient, to grant a rule, that the patentee, or his executor, administrator, or assign show cause why process should not issue against him to re- peal such patent. And if sufficient cause shall not be shown to the contrary, the rule shall be made absolute, and thereupon the said judge shall order process to be Issued against such pat- entee, or his executors, administrator, or assigns, with costs of suit. And in case no sufficient cause shall be shown to the contrary, or if it shall appear that the patentee was not the true inventor or discoverer, judgment shall be ren- dered by such court for the repeal of such pat- ent ; and if the party at whose complaint the process issued shall have judgment given against him, he shall pay all such costs as the defendants shall be put to in defending the suit, to be taxed by the court, and recovered in due course of law. [Repealed July 4th, 1836.] Act approved July 4th, 1836. [See also " Interference" in the Patent Acts.] Cases. 1. The proceeding authorized by Section 10, Chapter 11, of the act approved February 21st, 1793, is in the nature of a scire facias at com- mon law to repeal a patent. Stearns v. Barrett, 1 Mason, 153.— Stoky, 1816. 3. The Circuit Court has appellate jurisdiction in proceedings for repeal of patent — under Sec- tion 10, Chapter 11, act of 1793 — where the mat- ter in dispute exceeds $300. [Jud. Act, 1789, Ch. 20, Sec. 22.]— is. 3. In the proceeding for repeal of patent — authorized by Section 10, Chapter 11, act ap- proved February 31st, 1793 — the burden of proof is on the plaintiff. — lb. 4. In the proceeding authorized by Section 10, Chapter 11, act approved February 21st, 1793, prior refusal of the defendant to join in the ar- bitration provided for by Section 9 is not con elusive against him. — lb. 5. Scire facias issues at common law to repeal a patent obtained surreptitiously or upon false suggestion. Wood et al. e.c parte, 9 Wheat. 603. —Sup. Ct. 1824. 6. Under Section 10, act of February 31st, 2% ANNULMENT OF PATENT. 1793, the proceedings antecedent to the rule absolute are to be made of record ; after rule absolute, process in the nature of scire facias fol- lows ; thereupon pleadings pro and con are to be filed and issue joined ; if an issue of fact arises, it is to be tried to the jury ; if of law, to the court. — lb. 7. A patentee cannot avoid his own patent by his own declaration simply. It may be avoided by adversary proceedings in court, or by a sur- render and vacatur entered on the records, and, if not vacated for fraud, a new patent may be issued fo^ the unexpired term.' Morris v. Hunt- ington, 1 Paine, 348.. — Thompson, 1824. 8. A patent cannot be cancelled in a court of law, but may be annulled in chancery by a scire facias. Whitney et al. v. Emmett et al. , 1 Bald. 303. — HoPKrfrsoN & Baldwin, 1831. 9. "No discretion is left to the court to annul a patent for any reason not contained in the acts of Congress." — lb. 10. The proceeding provided for in Section 10 of the act of February 21st, 1793, applies only when the patent- has been obtained by fraud. [Subsequently doubted by the same judge in the same case. ] Delarw v. Scott, 1 Gil" pin, 489. — HoPKiNSON, 1884. 11. In this proceeding the hearing on the re- turn of the rule to show cause is a proceeding initial to a trial by jury, if the court find ground therefor. — lb. 12. In this proceeding constructive notice oif a previous patent is not sufficient to fix fraud on a subsequent patentee. The notice must be act- ual. — lb. 13. In the proceeding provided for in Sec- tion 10 of the act of February 21st, 1793, the contijoversy is between the complainant and the patentee. The United States cannot be substi- tuted as plaintiff. Wood v. Williams, 1 Gilpin, •517.— HoPKiNSON, 1834. 14. Where a patent had issued to a party to whom it did not rightfully belong the court di- rected the party to surrender the patent to be cancelled. Appleton v. Bacon et al., 2 Black. 699.— Sup, Ct, 1862. 15. " Section 16 of the act of 1836 author- izes a court of equity, in cases of interfer- ence, to take jurisdiction and annul the pat- ent issued to the party in the wrong. Beyond this the patent laws are silent upon the subject of the exercise of such authority. This review furnishes a strong implication that it was the in- tention of Congress not to allow a patent to be abrogated in any collateral proceeding, except in the particular instance mentioned, but to leave the remedy in all other cases to be regulated by the principles of general jurisprudence." Bvb- ber Go. v. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 16. After an extended patent ha,d expired, a bill was filed asking for the vacation of the pat- ent ; the court held that " the extension having expired before the bill was filed, there is no equity to support the application to set it aside. The extension had ceased to be of any effect, and there remains nothing which can be the subject of a suit. " Bourne v. Goodyear, 9 Wall. 811.— Sup. Ct. 1869. 17. "The only authority conferred on" a United States Circuit Court " by any statute of the United States, to adjudge any letters-patent to be void, is that given by Section 16 of the act of July 4th, 1836 [5 U. S. Stat, at Large, 123], as extended by Section 10 of the act of March 3d, 1889 \id. 354] ; such authority extends, by those provisions, no farther than to a case of two in- terfering patents, and to a case where a grant- ing of a patent is refused by the Commissioner of Patents, or by the chief justice of the Dis- trict of Columbia on appeal." Merserole et al. V. Union Paper Oolla/r Co., 6 Blatch. 356. — Blatchpord, 1869. 18. In a suit for the annulment of a patent, ' ' the. fact that the suit is instituted on behalf of the United States by the person who is district attorney, and that he acts as such in instituting the suit on behalf of the United States, must ap- pear by the face of the bill or declaration, or the pleading will be 'held bad." United States V. Doughty, 7 Blatch. 424. — Blatchposd, 1870. 19. A patent cannot be annulled in collateral proceedings, it can only be annulled in some di- rect suit to impeach and set aside the patent. Eureka Co. v. Bailey Co., 11 Wall. 488.— Sur. Ct. 1870. 20. " No one but the Government, either in its own name or the name of its appropriate officer, or by some form of proceeding which gives offi - cial assurance of the sanction of the proper au- thority, can institute judicial proceedings for the purpose of vacating or rescinding the patent which the Government has issued to an individ- ual, except in cases provided for in Section 16 of the act of July 4th, 1836. " Mowry v. Wliit- ney, 14 Wall. 484.— Sup. Ct. 1872. 21. " The nature of the Chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant or patent from the Government. " — lb. 22. " Section 16 of the patent act of 1880 seems to have in view the same distinction made by the common law in regard to an- nulling patents ; for while it authorizes individ- I uals claiming under conflicting patents, or one ANNULMENT OF PATENT. 23 whose claim to a patent has been rejected be- cause his invention was discovered by a patent already issued, to try the conflicting claim in chancery, and authorize the court to annul or set aside a patent so far as may be found neces- sary to protect the right, the suit by individuals is limited to that class of cases. And it is pro- vided that the decree shall be of no validity ex- cept between parlies to the suit. The general public is left to the protection of the Govern- ment and its officers." — Ih. 33. For an example of interference between two patents and annulment of one of them, see — . Sturges v. Van Hagen, 6 Fish. P. C. 573.— Blodqbtt, 1873. 34. A bill in equity was brought, under Sec- tion 58 of the patent act of 1870, for the repeal of certain letters-patent granted to the defend- ants, April 14th, 1874, which were alleged to be for the same invention as was covered by a pat- ent granted to complainant May 12th, 1874, and, therefore, to constitute an interfering patent. The court, after a review of the case of Mowi-y V. Whitney, held the statute of 1870 to be broader in its application than that of 1836 ; that under it the court was authorized to review both pat- ents on theu- merits, and to decree the cancella- tion, not only of either, but of both ; and that it might do so on the ground of want of novelty in either, or both, or any other ground that would, in an action for infringement, affect- the validity of either. Foster v. Lindsay et al., 1 Bann. & Ard. 605.— Treat, 1874. 35. There can be found no " precedent . . . for the suing out of a writ of scire facias, or the bringing of a bill in equity to repeal a patent by the attorney-general in the name and behalf of the United States, either with or without a re- lator. " Attorney - General Y. Rumford Chemical Works et al., 3 Bann. & Ard. 398.— Shbplbt, 1876. 26. "The jurisdiction conferred by acts of 1790 and 1793 upon the federal courts to repeal a patent, and which, without express grant, did not inhere in those courts, is nowhere con- ferred by the acts of 1836 or 1870, or in the re- vised statutes of 1874. " — /*. 37. " The decisions in the federal courts, sus- taining proceedings in equity to vacate letters- patent granting lands, obtained by fraud, fur- nish no precedent in case of letters-patent for in- ventions. ' ' — lb. 38. "In proceedings to repeal patents, 'the Attorney-General of the United States, as he is Attorney- General,' has no authority, as such, and in his own name, to flle an information or commence proceedings by bill in equity. . . . The information [if the court has jurisdiction to entertain it] should be in the name of the United States, and . . . should be filed by the Attorney of the United States, in the district in which the information is filed, ' in the name and behalf of the United States. "... The usual and proper mode is for the district attorney to flle an in- formation in the name and behalf of the United States, and probably only in thaLform could one be sustained, if objected to." — lb. 39. A proceeding for the annulment of a pat- ent by the Attorney-General of the United States is not, under the control of a private person, liable to be sued under the patent. -N. T. & Bait. Coffee Polishing Co. v. N. Y. Coffee Polishing Co., 20 Blatch. 174.— Benedict, 1881. 30. "A bill in equity lies to set aside letters-pat- ent obtained by fraud, but only between the sov- ereignty making the grant and this grantee." U. 8. V. Gunning et al., 18 Fed. Rep. 511.-- Wallace, 1883. 31. After the expiration of a patent, a suit was brought by the direction of the attorney-gen ■ eral to repeal it. A motion was made for an in- junction to restrain the commencement or prose- cution of such suits for infringement.. Motion denied. U. 8. v. Colgate, 33 Blatch. 412.— Wheeleb, 1884. 32. Where it is sought to repeal a patent in the name of the United States, ' ' when it is ap- parent that the name of the United States is only colorably used, and that the suit is really prose- cuted by private persons, ' ' a demurrer to the bill will be sustained. United States v. Frazer, 23 Fed. Rep. 106.— Blodgett, 1884. 33. It seems tha,t if a man applies for a patent as an original and first inventor, when he knows he was not, or if to get the patent ha alleges that the invention had not been in public, use or on sale for two years prior to the application, when he had knowledge to the contrary, that such states of fact constitute the fraud which makes the patent repealable at the instance of the United States. TI. 8. v. Cunning et al., 33 Blatch. 31.— Wheeler, 1884. 34. It seems that in an equity suit for infringe- ment, where defendant owns and sets up an in- terfering patent, the complainant's patent may be declared void by the court, and the com- plainant enjoined from bringing or threatening further suits under it. Sawyer v. Masaey et al. , 35 Fed. Rep. 144.— Spear, 1885. 35. " The Government, in the absence of any express enactments, has no power to bring a bill in equity to cancel a patent." United States V. Am. Bell Tel. Co. et al., 41 0. G. 133.— Colt, 1887. 24 APPEAL. 3.6. A victory in a Patent Office interference is pnnia/acie sufficient to enable the victor to lia,ve the patent of his opponent annulled. Folding Box Go. v. Rogers, 33 Fed. Rep. 695 Wallace, 1887. APPEAL. This title (with the exception of the first case) pertains to the removal of cases from the United States Circuit Court to the United States Supreme Court, and embraces all modes of such removal without reference to the technical name of the proceeding. "Appeal" in the Patent Acts. Act approved February 15th, 1819. Be it enacted, etc. . That from all judg- )uents and decrees of any circuit courts rendered J a the premises, a writ of error or appeal, as the < ;ase may require, shall lie to the Supreme Court of the United States. . . . [Repealed July 4th, 1836.] Act approved July 4th, 1836. Section 17. . From all judgments and decrees from any such court rendered in the premises, a writ of error or appeal, as the case may require, shall lie to the Supreme Court of the United States, in the same manner and under i*he same circumstances as is now provided by law in other judgments and decrees of circuit courts, and in all other cases in which the court shall deem it reasonable to allow the same. [Re- pealed July 8th, 1870.] Act approved February 18th, 1861. Sec. 1. Be it encbcted by tlie Senate and House of Bepresentatives of the United States of America in Congress assembled, That from aU judgments and decrees of any circuit court rendered in any action, suit, controversy, or case, at law or in equity, arising under any law of the United States granting or confirming to authors the ex- clusive right to their respective writings, or to inventors the exclusive right Vo their inventions or discoveries, a writ of error or aj^peal, as the case may require, shall lie, at the instance of either party, to the Supreme Court of the United States, in the same manner and under the same circumstances as is now provided by law in other judgments and decrees of such circuit courts, without regard to the sum or value in contro- versy in the action. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 56. Andheit further enacted,'Yha,\,2,^'[\t of error or appeal to the Supreme Court of tlie United States sliall lie from all judgments and decrees of any circuit court, or of any district court exercising the jurisdiction of a circuit court, or of the Supreme Court of the District of Columbia, or of any territory, in any action, suit, controversy, or case, at law or in equity, touching patent-rights, in the same manner and under the Same circumstances as in other judg- ments and decrees of such circuit courts, with- out regard to the sum or value in controversy. [Repealed June 22d, 1874.] Act approved June 22d, 1874. Sbc. 699. A writ of error may be allowed to review any final judgment at law, and an appeal shall be allowed from any final decree in equity hereinafter mentioned, vs-ithout regard to the sum or value in dispute : , First. Any final judgment at law or final de- cree in equity of any circuit court acting as a circuit court, or of the Supreme Court of the District of Columbia or of any territory, in any case touching patent-rights or copyrights. Cases. 1. The Circuit Court has appellate jurisdic- tion in proceedings for repeal of patent — under Section 10, act of 1793^— where the matter in dis- pute exceeds $300. [Jud. Act, 1789, Ch. 20, Sec. 22.] Stearns v. Barrett, 1 Mason, 153. — Btoey, 1816. 2. Where a case comes to the Circuit Court on a venire facias de novo, formal objections to the mode of taking the case to the Supreme Court will be deemed to have been waived. BcaTis V. Eaton, 3 Wash. 443.— Wash. 1818. 3. "It is no ground of reversal that the court below omitted to give directions to the jury upon any points of law v^hich might arise in the cause, when it was not requested by either party at the trial." Pennoeh et al. v. Dialogue, 2 Peters' C. C. 1.— Sup. Ct. 1829. 4. As to an appeal to the Supreme Court, under Section 17 of the patent act of July 4th, 183'o, the court below is limited by Congress in its power to allow such appeal, and ' ' must confine the indulgence to cases where it ap- pears to the court to be ' reasonable. ' " " It is discreet and reasonable to confine the appeals, even on patent questions under the patent laws, to such as involve important and not trifling matters connected with those laws, not merely technical ones ; also to such as involve ques- tions really doubtful." Allen v. Blunt et al., 2 W. & M. 131.— Woodbury, 846. 5. When a case comes to the Supreme Court upon a writ of error, under Section 17 of the General Patent Law of July 4th, 1836, the whole case, and not part of it, comes up to the Supreme Court, and the whole case is examined by that court. Hogg et al. v. Emm-son, 6 Howard, 437. —Sup. Ct. 1848. 6. " An appeal may be prosecuted only from a final decree. " Where there is a reference to APPEAL. 25 the master to ascertain clamages, and no state- ment as to costs, the decree is not final. Bernard et al. V. Gibson, 7 Howard, 650.— Sdp.*Ct. 1849. 7. A -ivrit of error can be taken to the Supreme Court from a circuit court upon an agreed statement between the parties. Stimpson v. B. & 8. B. B. Co., 10 Howard, 329.— Sup. Ct. 1850. 8. The question as to the substantial identity of two machines is a question of fact which cannot be certified to the Supreme Court from a circuit court under the act of 1802, Chapter 31, Section 6. " That act evidently gives the juris- dii ,tion only in cases where the judges of the Oiccuit Court differ in opinion on a point of laif. " Wilson, v. Barnum, 8 Howard, 259. — Sip. Ct. 1850. 'it. Under Section 17 of the patent act of 1836, where a judge is sitting at a stated term, and a julge is sitting in chambers of the same, the lai ter may, in chambers, allow a writ of error. F(0ieY. Silsby et al., 1 Blatch. 542. — ^Nelson, 1850. 10. The question, " Whether, according to the tnie construction of the Woodworth patent, as amended, the machines made or used by the defendant at the time of flUng the bill, or either of them singly, do or do not infringe the said amended letters-patent, " was the question which a circuit court certified on. division to the Su- preme Court. Thereof the Supreme Court said : " The jurisdiction of this court to hear and de- termine a question certified from the Circuit Court is derived altogether from the act of 1802, Chapter 31, Section 6 [2 Stat., at Large, 159], and that act evidently gives the jurisdiction only in cases where the judges of the Circuit Court differ in opinion on a point of law." Wilson V. Barnum, 8 Howard, 259. — Sup. Ct. 1850. 11. In a case at law a verdict was rendered Docember 13th, and bill of exceptions filed De- cember 14th ; no exceptions were taken at the trial. The Supreme Court said : " It must ap- pear by the transcript, not only that the instruc- tions were given or refused at the trial, but also that the party who complains of them excepted to them while the jury were at the bar. . . It ne;d not be drawn out in form and signed before the jury retire ; but it must be taken in open court, and must appear by the certificate of the judge who authenticates it, to have been so taken." And thereupon the Supreme Court affirmed the judgment of the lower court. PMps V. Mayer, 15 Howard, 160.— Sup. Ct. 1852. 13? " It often happens that a court may de- cree in favor of a complainant, but not to the extent prayed for in his bill, and he may have just cause of appeal on that account. ' ' Oorning et al. V. Troy Iron & Nail Factory, 15 Howard, 4.51.— Sup. Ct. 1853. 13. " The law gives the party aggrieved an appeal from a final decree of an inferior court ; but it does not give the party who is not ag- grieved an appeal from a decree in his favor be- cause the judge has given no reasons, or recited no sufficient ones, for a judgment admitted by the appellant to be correct." — lb. 14. " To allow a second appeal to a court of last resort, on the same questions which were open to dispute on the first, would lead to end- less litigation." — lb. 15. " When a complainant has a decree in his favor, but not to the extent prayed for in his bill, and the respondent appeals, if the com- plainant desires a more favorable decree he must enter a cross-appeal, that, when the decree comes before the appellate court, he may be heard. For when the decree is either affirmed or reversed by the appellate court, it becomes the decree of that court, and cannot be the sub- ject of another appeal." — lb. 16. "A second appeal lies only when the court below, in carrying out the mandate of this court, is alleged to have committed an error. But on appeal from the mandate, it is well set- tled that nothing is before the court but the pro- ceedings subsequent to the mandate. Whatever was formerly before the court, and was disposed of. by its decree, is considered as finally disposed of."— 76. 17. Where a decree has been made by the Circuit Court, the case appealed to the Supreme Court, and the decision reversed by the Supreme Court and, with mandate to that efEect, sent to the Circuit Court and the mandate not acted upon by the Circuit Court, there is no final decree in the Circuit Court from which appeal can be taken. — lb. 18. The Circuit Court made a decretal order as follows : ' ' This cause came on, etc. , and by consent of parties it is declared by the court : That the complainants are entitled to the per- petual injunction and the account prayed for by the bill." Thereof the Supreme Court said: " The account consented to was the account prayed for by the bill, slnd in the plain words of the bill— viz , ' that the defendants may be de- creed to account for and pay over all such gains and profits as have accrued to them from using the said machine since the expiration of said original letters-patent. ' ' This language is par- ticularly clear and significant ; such gain and profits, and such only, as have actually accrued 20 APPEAL. to the defendants ; and we are unable to perceive liow, by such an assent, the appellants [the de- fendants below] could have been concluded against exceptions to anything and everything which might have been involved in that report, however illegal or oppressive." Livingstone et al. V. Woodworth et al., 15 Howard, 546.— Sup. Ct. 1853. 19. A patent suit was taken from the Circuit Court to the Supreme Court by writ of error, the blank in the transcript intended for taxation of costs not being iilled in. The Supreme Court affirmed the decision of the Circuit Court, and the case went back to the Ci,rcuit Court ; there- upon the costs were taxed at less than $2000, and it was sought to take the case again to the Su- preme Court by writ of error. The Supreme Court held that a writ would not lie, for that ' ' after a case has been brought here and decided, and a mandate issued to the court below, if a second writ of error is sueji out, it brings up for revision, nothing but the proceedings subsequent to the mandate. None of the questions which were before the court on the first writ of error can be reheard or re-examined upon the second ; and there is nothing, therefore, now before the court but the taxation of costs. . . . " The sum taxed being less than $3000, no writ of error will lie under the act of 1789. This act gives no jurisdiction to this court over the judg- ment of a circuit court, where the judgment is for less than that sum. ' ' Sizer et al. v. Many, 16 Howard, 98.— Sup. Ct. 1853. 30. Where the report of the master is not ob- jected to and the case is appealed to the Supremo Court, it is then too. late to object to the report of the master. Kinsman et al. v. Parkhurst, 18 Howard, 389.— Sup. Ct. 1855. 31. Where a writ of error is pending, an in- junction will not be granted. Bay v. Harts- horn, 3 Pish. P. C. 33.— PiTTSMAN, 1855. 33. "A motion to amend, or to file an answer after default, is generally addressed to the dis- cretion of the court. Under some circum- stances, the court, for the purposes of justice, will go great lengths in opening a default and allowing a plea to be filed. But this is done or refused by the court in the exercise of its dis- cretion, which is not subject to the revision of" the Supreme Court. Bean v. Mason et al., 30 Howard, 198.— Sup. Ct. 1857. 23. " The citation of the defendant was signed by the clerk of the court and not by the judge, who allowed a writ of error. ' ' Record was filed and the case docketed in the Supreme Court November 24th, 1856, and on December 4th de- fendant appeared by counsel in that court. The Supreme Court said that the citation was irreg- ular ; that the defendant in error was not bound to appear in the Supreme Court, and that plain- tiff's motion to dismiss for a reason stated by him at a subsequent term came too late. Chaffee V. Wayward, 30 Howard, 308.— Sup. Ct. 1857. 34. " If an appeal is taken in court at the time of rendering the decision, or during the term, no citation is necessary." Bilsby et al. v. Foote, 20 Howard, 390.— Sup. Ct. 1857. 35. Appeals taken within ten days after the decision is entered on the minutes of the clerk are regular, and stay execution in the court be- low. — lb. 26. A question being decided in the Circuit Court, and then coming to the' Supreme Court, and the justices of the Supreme Court being di- vided thereupon, the decision of the lower court stands afl5rmed. Silsby et al. v. Foote, 30 How- ard, 378.— Sup. Ct. 1857. 37. " Bills of exception, when properly taken and duly allowed, become a part of the record, and, as such, cannot be contradicted." Ghaffee V. Boston Belting Co., 23 Howard, 317. — Sup. Ct. 1859. 38. A decree in a circuit court " was that the complainants were entitled to a perpetual inju nc- tion and for an account of gains and profits, and that the cause be referred to a master to tike and state the amount and report to tlie court." It was held that this decree could not be ap- pealed from, because it was not final. Humis ',on V. Staintliorp, 2 Wall. 106.— Sup. Ct. 1864. 29. " The equity of the statute, allowing a biU of exceptions in courts of common law, em- braces all such judgments or opinions of the court arising in the course of a cause as are sub- jects of revision by an appellate court, and which do not otherwise appear on the record." Heck- ers V. Fowler, 2 Wall. 133.— Sup. Ct. 1864. 30. " The appeal, and bond given in pursuance thereof, do not Vacate or suspend the order of injunction ; they affect only the collection of the amount adjudged as damages and costs." Wliitney v. Mowry, 2 Bond, 45. — Leavitt, 1867. 31. The rights of parties in respect to taking appeals are determined by the date of the actual entry or of the signing or filing of the final de- cree. Rubber Co. v. Goodyear, 6 Wall. 153. — Stjp. Ct. 1867. 32. ' ' In equity cases, the appellate jurisdiction of this [the Supreme] court attaches upon the allowance of the appeal. In order to make the appeal operate as a supersedeas, it Is necessary for the appellant to give a good and sufficient security for the prosecution of the appeal, and for all costs and damages that may be adjudged APPEAL. 37 against him. This security is usually given by bond, with one or more sureties, and Sec- tion 32 of the Judiciary Act requires that it be taken by the judge who signs the citation on appeal. It is not required that the surety shall be in any fixed proportion to the decree. What is necessary is that it be sufficient, and when it is desired to make the appeal a super- sedeas, that it be given within ten days from the rendering of the decree. The question of suffi- ciency must be determined in the first instance by the judge who signs the citation, but after the allowance of the appeal, this question, as well as every other in the cause, becomes cog- nizable here. " It is, therefore, matter of discretion with this court to increase or diminish the amount of the bond, and to require additional sureties or other- wise as justice may require." — lb. 33. Where, in a suit in the Circuit Court, com- plainants have bought in the patents under which suit was defended, and the defendants have be- come owners with complainants, there is no real litigation, and the Supreme Court will not pro- ceed with the case. Wood-Paper Oo. v. Heft, 4 Wall. 833.— SiTP. Ct. 1869. 34. " The patent law of February, 1861, gives to parties in suits arising under any law of the United States giving to inventors the exclusive right to their inventions or discoveries, a writ of error or appeal to the Supreme Court of the United States, without regard to the sum in controversy. The act of 1870 does not alter the right of appeal or to a writ of error in this re- spect." Philip et al. v. Nock, 13 Wall. 185.— Sup. Ct. 1871. 35. The rules of the Circuit Court cannot be judicially noticed by the Supreme Court on ap- peal. Packet Go. v. ^ckles, 19 Wall. 611.— Sup. Ct. 1873. 36. When, in a bill of exceptions, the court places its action on " rules, with the construction of which, and the course of practice under them, it must be familiar, it would seem that the party assigning error on such rulings should be bound to exhibit in his bill of exceptions so much of the rule or rules as affects the question." — lb. 36rti. Where, in a circuit court, the defence of invalidity of reissue is not made, that defence cannot be made in the Supreme Court. KUen V. Russell, 19 Wall. 433.— Sup. Ct. 1873. 37. Notwithstanding an appeal has been taken to the Supreme Court from a decree of a circuit court, it yet remains for the Circuit Court to enforce its decree for the payment of the master. Nor would the case be varied if the defendants had given a bond to the master to stay proceed- ings to enforce payment of his compensation. Myers et al. v. Dunbar et al., 13 Blatclj. 380. — Blatchpobd, 1874. 38. In order to obtain a supersedeas under the act of June 1st, 1873, where, in the language of Rule 39, " the decree is for the recovery of money not otherwise secured," the practice is to require a bond with one or more sureties for double the amount of the decree and costs, and such practice should not be departed from except in those cases where the appellee is made secure in other ways, and where such re- quirement under some such special circumstances will operate as a hardship upon the appel- lant. Am. Nicholson Pavement Oo. v. City of Elizabeth et al., 9 Bann. e an assignment of a patent-right. Jibdkins et al. v. Earl et al. , 7 Greenl. 9.— Pahris, 1830. 8. Certiiied copies of recorded assignments are admissible in evidence. Brooks et al. v. JenMiu et al., 3 McLean, 433.— McLean, 1844. 9. The ownership in a patent in the hands of an administrator is a unit, extending throughout the United States, which he has power to sell within a state the same as any other personal property of the estate, and the right may be con- veyed in parts, so as to satisfy purchasers. — lb. 10. Where A "sells" to B "the exclusive right to clean wool, etc., ' upon the machine in- vented or improved by ' him, and ' for which improvements I am now iireparing to obtain let- ters-patent of the United States ;' " and " cove- nants to ' use all due diligence and effort to mature my said inventions and improvements for cleaning wool as soon as possible, ' and to take out letters-patent therefor, and assign the same for cleaning wool to the complainants," the contract does not cover improvements en- tirely made in the future. Neamith et al. v. Cal- vert et al., 1 W. & M. 34.— WooDECRT, 1845. 11. An assignee cannot take any better right to a patent as regards a grant thereof than could the assignor ; if the assignor was right, so will be the assignee. Tatliam v. Loring, 5 N. Y. Legal Observer, 307. — Stoey, 1845. 13. An assignment of a patent by the inventor does not carry the extension thereof to an as- signee under the original term. Brooks et al. v. Bicknell et al., 4 McLean, 64. — McLean, 1845. 13. In an act of Congress extending a patent, it was provided ' ' that all rights and privileges theretofore granted by said patentee, to make, construct, or vend the said invention, and not forfeited by the purchasers or grantees, shall inure to and be enjoyed by such purchasers or grantees respectively as fully and upon the same conditions during the period hereby granted as for the term that did exist when such sale or grant was made. ' ' The inventor had previously made an assignment ' ' of all his right to the in- vention covered by the patent under the said patent, and any other patent issued or to be is- sued for the same invention, with all the rights he might have enjoyed if the assignment had not been made. " It was held that the assignee took the extended term, and that Congress has the constitutional right to extend a grant of a patent for the benefit of an assignee. Blanchard Ovnstock Turning Factory v. Wa/rn^r, 1 Blatch. 358.— Nelson, 1848. 14. " The assignment of a patent in whole or in part is authorized by the act of Congress, and it is required to be recorded in the Patent Office. ' ' After an assignment has been recorded, a duly-authenticated copy of it is prima facie evidence at least. Parker v. Haworth, 4 Mc- Lean, 370.— McLean, 1848. 15. Where an assignment extended " to the full end of the term or terms for which the letters- patent are, or may be, granted for said improve- ments as fully and entirely as the same would have been enjoyed by me had this assignment not been made," it was held tj) carry the extend- ed term. Plielps v. Comstock, 4 McLean, 353. — McLean, 1848. 16. An assignment of a patent to be issued upon an application which stands rejected is proper and lawful. Qa,y v. Cornell, 1 Blatch. 506.— Nelson, 1849. 17. An assignment of a patent to be issued, made before that issue, is legal and proper. It vests the title in the assignee, although the pat- ent may issue in the name of the assignor. Gay- ler et al. v. Wilder, 10 Howard, 477.— Sup. Ct. 1850. 18. An invention may be sold and assigned as well before application for a patent as aftenvard. RatJibone et al. v. Orr et al., 5 McLean, 131. — McLean, 1850. 19. An inventor had taken a patent for making wrought nails or spikes, and assigned it to an- other party, using in connection thereto these words : " With all the improvements which he hath made or shall make in the same, in any other part of the United States, as the said parties of the second part shall deem expedient, during the term for which the same are or may be pat- ented by the said party of the first part. ' ' The same Inventor subsequently invented a bending lever for use in the same kind of manufacture. The court held that this was a covenant which bound the inventor to convey to the other party the said improvement upon a bending lever, and that the said other party was equitably entitled to the said later improvement as soon as made. Troy Iron & Nail Factory v. Corning et al. , 14 Howard, 193.— Sap. Ct. 1853. 30. An assignment purported to be of a pat- ent " for a horological cradle." The patent in- tended was for a design for a horological cradle. ASSIGNMENT. 39 The assignment was held good as regards this point. Myers et al. v. Turner et al., 17 111. 179.— Caton, 1855. 31. Where there is more than one administra- tor on the estate of a patentee, and one of them makes an assignment of the patent, the assign- ment is valid. Wintermute v. Bedington, 1 Fish. P. C. 339.— Wilson, 1856. 33. One ChafiEee made a written conveyance of his patent, containing words as follows : " Now, I [Chaffee] do hereby, in consideration of the premises, and to place my patent so that in case of my death, or accident or event, it may inure to the benefit of said Charles Goodyear, and those who hold a right to the use of said pat- ent, under and in connection with his licensees, according to the understanding of the parties interested, nominate, constitute, and appoint said William Judson my trustee and attorney irrevo- cable, to hold said patent and have the control thereof, so as no one shall have a license to use said patent or invention, or the improvements secured thereby, other than those who had a right to use the same when said patent was ex- tended, without the written consent of said Jud- son first had and obtained." The court held that by this conveyance the entire interest and ownership in the patent passed to Judson for the benefit of Goodyear and those holding rights and licenses under him. HarUlwrn et al. v. Day, 19 Howard, 311.— Sup. Ct. 1856. 23. Where a patent owner assigns his patent to another party upon the consideration of a pay- ment of an annuity, and the annuity is not paid, that does not give the assignor a right to rescind the assignment. — li. 24. " The general rule is, that, in an action upon a sealed instrument in a court of law, fail- ure of consideration, or fraud in the considera- tion, for the purpose of avoiding the obligation, is not admissible as between parties and privies to the deed, and more especially where there has been a part execution of the contract." — lb. 25. ' ' The terms assignee and grantee are not used in the patent law of 1836 as synonymous terms, though the courts, without having their attention particularly called to the subject, have .sometimes used them indiscriminately, and in their popular sense. They have, however, . . . separate and distinct meanings." Potter et al. V. Holland, 4 Blatch. 206.— Ingeksoll, 1858. 26. " An assignee is one who has transferred to him in writing the whole interest of the orig- inal patent, or an undivided part of such whole interest in every portion of the United States. And no one, unless he has such an interest trans- ferred to him, is an assignee." — lb. 27. A written assignment of a patent made by B with the consent of A, who owns the patent, effectively conveys A's interest. Sherman V. Champlain Transportation Co., 31 Vt. 163. — Rbdpibld, 1858. 38. " As a general rule, an assignment of an interest in a patent must be in writing, for the reason that such transactions are required to be recorded, and in fact and reality are not author- ized to be made in any other way. ' ' — Baldwin V. Sibley etal., 1 Clifford, 150.— Clifford, 1858. 29. A certified copy of the record of an assign- ment is admissible in evidence. Lee et al. V. Blancly et al., 1 Bond, 361.— Lbavitt, 1860. 30. A prior unrecorded assignment is good against subsequent assignments without valua- ble consideration. Saxton v. AiiUman, 15 Ohio St. 471.— Welch, 1864. 31. Where a patent recites an assignment to the assignee, that is conclusive evidence of the assignee's title. Hojfheins et al. v. Brandt, 3 Fish. P. C. 218.— Giles, 1867. 33. An assignment of a patent carries with it a title to the reissue thereof. Middletown Tool Co. V. JuM et al., 3 Fish. P. C. 141. — Shipman, 1867. 33. An assignment, under the original term of a patent, was ' ' for and during the term for which said letters-patent are or may be granted. ' ' This was held not to convey to the assignee a similar right under the extended term. Wood V. Michigan Southern cfe No^'.thern Indiana B. B. Co., 3 Bissell, 63.— McDonald, 1868. 34. " An assignee is one who holds, by a valid assignment in writing, the whole interest of a patent, or any undivided part of such whole in- terest throughout the United States." Moore V. Marsh, 7 Wall. 515.— Sup. Ct. 1868. 35. An assignment which conveys all the as- signee's " right, title, interest, ' claim, or demand whatsoever, in, to, or under ' the patent, . . conveys only the right to claims for infringement which should be committed after such assign- ment. . . . The words ' claim or demand what- soever, in, to, or under ' the patent, are not suffi- cient to cover claims for past infringements. ' ' Dibble v. Augur, 7 Blatch. 86.— Blatchpord, 1869. 36. " The act of Congress authorizes assign- ments only in writing, and legal ownership can be acquired only by written instrument." Jor- dan V. Dobsonetal., 3 Abb. U. S. 398.— Strong, 1870. 37. A, owner of a patent, conveyed to B the entire interest in his patent except the right to manufacture said machines in certain counties. Held, that B was the proper party to bring suit 40 ASSIGNMENT. for infringement. Cliambers v. Smith et al,, 5 Fishi. P. C. 12.— McKennan, 1870. 38. A certificate stating that a certain person is tlie owner of a certain part of the stock in patents of an incorporated company is not an as- signment under the patents. Hope Iron Works V. Holden et al., 58 Me. 146.— Danfobth, 1870. 39. By a written conveyance, a person con- veyed " all his property and estate, whatsoever and wheresoever, of every liind and description. ' ' It was held that this instrument conveyed all the maker's rights under patents, whatever they may have been. Railroad Co. y. Trimble, 10 Wall. 867.— Sup. Ct. 1870. 40. A conveyance of interest in a patent by a receiver, appointed in proceedings where the court did not "have jurisdiction of the patent owner, is null and void. — lb. 41. Where there is doubt as to the proper construction of an instrument, the conduct of the parties is entitled to great consideration ; " but where its meaning is clear in the eye of the law, the error of the parties cannot control its effect."-^ J J. 43. An assignment of an interest in a patent which is abandoned by both parties is void from the beginning. -^76. 43. Where an agreement is made between two parties looking toward an assignment of an in- terest in the patent, and the future assignee abandons his right at one time thereunder, he cannot afterward reassert his light. Kittle et al. V. Frost et al., 9 Blatch. 214. — Blatchford, 1871. 44. In construing a conveyance under a pat- ent, ' ' parol testimony to show all the circum- stances is admissible when the language may be susceptible of more than one meaning, such as their knowledge of the subject-matter of the con- tract, and all other facts that would throw light upon the intention of the parties. " May et al. V. Chaffee et al., 3 Dillon, 885.— Nblson, 1871. 45. " An assignment of an interest in an in- vention secured by letters-patent is a contract, and, like all other contracts, is to be construed so as to carry out the intention of the parties to it." Nicolson Pavement Co. v. Jenkins, 14 Wall. 452.— Sup. Ct. 1871. 46. " The title of an inventor to obtain an ex- .tension may be the subject of a contract of sale. ' ' —Ih. 47. A conveyance under a patent set out that the assignors " do hereby bargain, sell, assign, convey, and transfer unto said company, its suc- cessors and assigns, all the inventions and im- provements in the manufacture of composition brush-backs and handles, with suitable stifleners. made, contemplated, or hereafter to be made by us, or either of us. " At the same time one of the assignors had pending an application for a patent on a hand-mirror very like in its con- struction to the brush-backs. This conveyance was held not to cover and include the hand- mirror. Clark et al. v. Scott, 9 Blatch. 301. — Blatchford, 1872. 48. An assignment conveyed " ' all the right, title, atid interest which I ' [the patentee] have in the said inventions, or either of them, as se- cured to me Jjy said letters-patent, ... to the full end of the term for which said letters-patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not been made." Tlie court held that "the words, 'to the full end of the term for which said letters- patent are or maybe granted,' necessarily im- port an intention to convey both a present and a future interest." Muggles v. Eddy et al., 10 Blatch. 53.— Woodruff, 1873. 49. A written convenance set but that the in- ventors " have applied, or intend to apply, for letters-patent," and it conveyed " all the right, title, and interest whatsoever, which we now have, or, by letters-patent, would be entitled to have and possess, in the aforesaid invention, the said invention being described in the specifica- tion as prepared and executed by us, for the obtaining of said lettei's-patent, the whole to be held and enjoyed by the said Henry Tanner, and his legal representatives, to the full extent and manner in which tlie same would have been, or could be, held and enjoyed by us, had this as- signment not been made ; and we do, by these presents, authorize the Commissioner of Patents to issue the said letters-patent to the said Henry Tanner, and his legal representatives, as the as- signs of our whole right and title to the same, and to the new invention aforesaid." This was held to apply to the extended term. Mowry et al. V. Grand St. & Newtown R. R. Co., 10 Blatch. 89.— Benedict, 1873. 50. " An assignment of the invention, without words importing an intention to convey both a present and a future interest, will not pass the right to an extension." — lb. 51. An insolvent patent owner must himself assign the patent in order to pass the right. An assignment by his trustee or the like will not an- swer. Asheroft v. Walworth et al., 1 Holmes, 153.— Shbpley, 1873. 52. An assignment under a patent conveyed the right " to the full end of the term for which said letters-patent are or may be granted, as fully and entirely as the same would have been ASSIGNMENT. 41 held and enjoyed by me had this assignment and sale not been made." This was held to apply to an extended term. Thayer et al. v. Wales et cU., 5 Fish. P. C. 448.— Benedict, 1873. 53. An inventor made an assignment of an extended term of his patent before the same was granted. It was held to become operative upon the grant of the extension. In this case the pat- entee was interested to the extent of one half of the proceeds from sales or use of the patented jnvention. Oear et al. v. Orosvenor et al., 1 Holmes, 215.— Sheplby, 1873. 54. An assignment of a patent carried the right ' ' to the full end of the term for which said letters-patent are or may be granted." This was held not to apply to an extended term. — lb. 55. " An assignment of an interest in an in- vention, and letters-patent therefor, before the expiration of the original term, does not carry with it any interest in a subsequently extended term, unless the assignment contains a specific provision to that effect." — lb. 56. The terms of an assignment conveyed to the assignee " 'all my right, title, and interest in and to the said letters-patent, in the following described territory,'" . . . "'as fully and clearly as the same would have been held and enjoyed by me, if this assignment had not been made." The court held that it anust construe this paper as not indicating, on the part of the assignor, an intention to convey territory that he had previously conveyed to other parties. Tarnbull et al. v. Weir Plough Co. , 6 Bissell 225.— Dkummond, 1874. 57. Where, by an assignment, a patent owner conveys away all his right, title, and interest in the patent, for certain described territory, and there is, at that time, only a residuary interest in the assignor, the assignment must be construed as conveying only that residuary interest. — lb. 58. The " power of assignment has been so construed by the courts as to confine it to the transfer of an entire patent, an undivided part thereof, within and throughout a specified por- tion of the United States. One holding such an assignment is an assignee within the meaning of the statute, and may prosecute in the Circuit Court any action that may be necessary for the protection of his rights under the patent. " Lit- tlefeld V. Perry, 31 "Wallace, 205.— Sup. Ct. 1874. 59. An agreement in an assignment or convey- ance by which the assignee or grantee is to pay royalty and to forfeit the conveyance if he does not, does not make the conveyance a mere license. — lb. 60. In an assignment or grant an agreement that the assignor or grantor shall sue infringers does not reduce the conveyance to a mere li- cense. — lb. 61. Where A makes an assignment under a patent to B, not then having the right, but sub- sequently acquires that right, the conveyance to _ B becomes valid when A subsequently acquires the title.— JJ. 63. "A recorded assignment of a perfected invention, made before a patent has issued, car- ries with it the patent when issued, . . . and . . . reissues are not patents for new inven- tions, but amendments of old patents." — lb. 6,8. " An assignment of an imperfect inven- tion, with all the improvements upon it that the inventor may make, is equivalent in equity to an assignment of the perfected results. ' ' — lb. 64. A convenance provided " that any and all letters-patent that may be obtained in this coun- try and all other countries by virtue of said in- vention, or by reason of any improvement, of any modification of the ssime by either party, shall be owned by and between the parties to his agreement in equal shares, to wit : one undivided half to each, and all proceeds of sale or sales of any and every kind and character shall be shared by and between the parties share and share alike. " Whipple, one of the parties to this con- veyance, entered into a partnership with one Dickerson, and they realized over |100,000 from inventions coming within the scope of the said conveyance ; the court held that Whipple was chargeable to Ambler with one half of all that had been or might be realized from the use of the patent. Ambler v. WJiipple, 20 Wall. 546. — StiP. Ct. 1874. 65. British letters-patent were granted to James Ellis, of Bradford, England, and one Joseph Sladdin, for an invention of the said Sladdin of improvements in machihery. Sladdin and Ellis made an assignment of the British pat- ent to David Bowlas, and conveyed to him " the said invention and letters-patent, and also . . all letters-patent or extensions to be hereafter ob- tained on account of the said invention." On or about August 4th, 1868, Sladdin took letters- patent of the United States for the same inven- tion. It was held that the British assignment was broad enough to divest Ellis and Sladdin of any interest in the invention described, and to vest the same in Bowlas. Hmmons et al. V. Sladdin et al., 2 Bann. & Ard. 199.— Shep- LEY, 1875. 66. " The discoverer of a new and useful im- provement is vested by law with an inchoate right to its exclusive use, which he may perfect and make absolute by proceeding in the manner 42 ASSIGNMENT. which the law requires. Such inchoate right, not only to the original letters-patent that may issue, but to any renewals or extensions, or to any letters-patent which may thereafter be is- sued at any time or in any place, may be con- Teyed by an instrument containing apt terms to show an intention to convey all the rights springing from the invention. " —IT). 67. " Whenever a patentee conveys his ' in- vention, ' without any other language in the deed of conveyance restricting the right to use the in- vention by a limitation of time or place, he must be considered to have granted the right to any letters-patent which he may issue thereon. ' ' — lb. 68. The operative words in an assignment w^ere : "I have assigned, sold, and set over, in trust, and do hereby sell and set over, in trust, all my right, title, and interest of, in, and to the aforesaid reissued letters-patent, and the inven- tion thereby secured." The assignee gave a license "to be exercised during the unexpired terms for which the said letters-patent are grant- ed and may be hereafter extended, on the terms and conditions hereinafter specified." These were held not to have any effect under the ex- tended term of the patent. Waterman v. Wal- lace & Sons et al., 13 Blatch. 138. — Shipman, 1875. 69. " It cannot . . be admitted that the written declarations of a trustee, in a conveyance to a third person, of property which had previ- ously been conveyed to the trustee by his cestui gue trust can be used against the latter, to de- termine the intent of both parties in making the original conveyance, and to show the extent of the interest which the cestui gue trust intended to convey by his deed. ' ' — lb. 70. A party holding an assignment under a patent cannot maintain a right thereunder against another party equitably entitled to such assign- ment, when the first party took its assignment with knowledge of the second party's rights. Mwellet al. v. Westetal., 13 Blatch. 114.— Wal- lace, 1875. 71. " The inchoate right of an inventor to an extension of his patent may be the subject of a contract of sale, and a contract to convey such right will be enforced by a bill for specific per- formance. " — lb. 72. " Where an invention is assigned before it is patented, the assignor is estopped, upon ob- taining the patent, from setting up any adverse title, and the doctrine applies with equal force when he has agreed to assign, because in such case the purchaser, upon tender of the purchase price, becomes the equitable owner of the pat- ent."— iJ. 73. An assignment of a patent made by an ex- ecutrix, although she assigns as administratrix, is valid to convey the title. — lb. 73ffl. A man died leaving his wife and daugh- ter. The wife was his executrix, and as such sold and assigned away a patent which he had. The daughter did not join in the assignment, and it was held that she need not join in order to make the transfer good. — lb. 74. " Only a person who is Invested with the entire ownership of a patent or an undivided part of the whole is to be regarded as an as- signee." Meyer et al. v. Bailey et al., 3 Bann. & Ard. 73.— McKennan, 1875. 75. An assignment in the nature of a quit- claim creates no warranty of validity of patent. Oilmore v. Aiken et al., 118 Mass. 94. — Gray, 1875. 76. " The interest in a patent may be assigned by operation of law in case of bankruptcy of the patentee." Barries v. Morgan, 3 Hun, 703. — Bradt, 1875. 77. " It is not a fair construction of the assign- ment of a patent that the patentee shall first as- sign the entire right for a particular territory and get its whole value from his vendee, and after having thus received all the benefit he was entitled to under the transfer, sell single ma- chines to be used in the same territory during the extended term. He will in this mode obtain the value of a right never conveyed to, him. " Union Paper Bag Mach. Co. et al. v. Nixon et al., 1 Flippin, 491. — Emmons and SwiNa, 1876. 78. ' ' Inventions may be assigned before they are patented." Cammeyeret al. v. Newtonet al., 94 U. S. 225.— Sup. Ct. 1876. 79. The assignment of an equitable interest in the proceeds of a patent need not be in writing. Blakeney et al. v. Ooode et al., 30 Ohio St. 350. —Wright, 1876. 80. A contract selling an interest in or under a patent, which may be extended within a year but is not, is not within the statute which nulli- fies " an agreement that is not performed within the space of one year from the making there- of."— /6. 81. On motion the court may compel a judg- ment debtor to execute the order of his receiver and make assignment of his letters-patent. Clan Ranald v. Wyckoff, 41 N. Y. Superior, 527.— Freedman, 1877. 83. As between an assignor and an assignee, an oral assignment is as good as any other. Burke V. Partridge, 68 N. H; 349.— Foster, 1878. 83. Isaac Adams, Jr., took a patent August 21st, 1866, in which he claims to "render gas tips and other similar articles anti-corrosive to ASSIGNMENT. 43 heat or moisture by surfacing them with nickel. ' ' One Cook bought this patent and assigned it to the defendants. Adams afterward took another patent for his process of plating with nickel. Defendants contended that in their ownership of the first patent they were entitled to the later patent. The court held otherwise. United Nickel Co. et al. v. American Niclcel- Plating Works et al. , 4 Bann. & Ard. 74. —Lowell, 1878. 84. A assigned a patent to B on condition that the assignment should be void unless certain notes which B gave to A were duly paid. The notes were not duly paid, and B reassigned to A, but previous to reassignment B granted a license to C. The license was held void. Abbett et al. V. Ziisi. 5 Bann. & Ard. 38.— Nixon, 1879. 85. Where the parties interested have treated an assignment as conveying a certain interest, the court will not, at the instance of other parties, decide otherwise. Edgarton et al. v. Break et al. , 5 Bann. & Ard. 43.— Lowell, 1879. 86. Where the two parties to a suit claim under the same patent, and the conveyance of each points to the title of the other party, such pointing is notice of the other party's title. Prime et al. v. Brandon Wfg Co., 16 Blatch. 453. — Wheblkk, 1879. 87. " The bankrupt law [rev. stat. U. S., Sec. 5046] vested all patent rights at once in the as- signee. His title was like that which the admin- istrators would have required if the bankrupt had died without bankruptcy proceedings being in force. It accrued by the operation of the law, and such titles need not be recorded." — lb. 88. " The provisioAS of the bankrupt law not only vested the title to patent rights which the bankrupt had in the assignee, but all rights in eauity, and choses in action, which would cover the whole." [Rev. stat. U. 8., Sec. 5046.]— JJ. 89. Where complainants and defendants were both concerned in making assignments that were made to deceive the Patent Office in extension proceedings, the court will leave the parties in those respects where it finds them. — lb. 90. The execution of an assignment by a per- son who signs his name, with the addition of " President," conveys that person's interest, but not the interest of the company. Campbell V. James et al, 17 Blatch. 43.— Whbblbk, 1879. 91. An assignee in insolvency does not acquire a legal title to a patent unless the insolvent makes a due assignment to him. Cordon V. Anthony et al., 16 Blatch. 334.— Blatch. 1879. 93. " All interests in patents are assignable by instrument in writing. No particular form is required, but still there must be some operative words expressing at least an intention to as- sign." Campbell v. James et al., 18 Blatch. 92. — Whbblbr, 1880. 98. "Whosoever assumes to sell a patent as- sumes to sell that property, and assumes that he had it to sell." " A warranty of title or right draws to it any after-acquired right or title of the warrantee." Faulks et al.v. Kamp et al., 17 Blatch. 432.— Whbblbk, 1880. 94. Where an assignment of a patent only as- sumes to convey the " right, title, and interest" of the assignor, there is enough in such an ex- pression to put the assignee upon inquiry as to what such ' ' right, title, and interest' ' is. Hamil- ton V. Kingsbury etal., 17 Blatch. 460. — Blatch. 1880. 95. An assignment which covers and includes " improvements to be subsequently invented or patented ... in, or of, or in aid of, the inven- tions and improvements patented," does not cover subsequently invented devices which are not infringements of the original patent. Steb- Uns Ey. El. M'fg Co. et al. v. Stebbins, 4 Fed. Rep. 445. — Blatchtokd, 1880. 96. An assignment conveyed all the assignor's right, title, and interest in the patent, " excepting thirty two or thirty-three counties heretofore sold and assigned. ' ' Held, not void for uncer- tainty, in that " this reservation is such as is ca- pable of being made certain by competent evi- dence showing what counties had been actually conveyed." WasJiburn& MoenM'f'g Co. etal. V. Haish, 10 Bissell, 65.— Blodgbtt & Dktjm- MOND, 1880. 97. A reissue to an assignee raises a presump- tion of title in the assignee. — lb. 98. " The patent having been graiited to the plaintiff, he is to be presumed to be still the owner of it." — lb. ^^. Heath, the inventor in complainant's pat- ent, filed his application for patent June 3d, 1871. July 20th, 1871, he assigned his patent, then to issue, to the party from whom com- plainant derived title, and requested that the patent issue to said party. The assignment was not recorded till November 18th, 1871, the patent issuing meanwhile, October 10th, 1871. On May 27th, 1872, he made another assignment of the same subject-matfer to a third party, which was recorded June 1st, 1872. Held, that complain- ant had a good title to sue on. U. S. Stamping Co. V. Jewett, 18 Blatch. 469.— Blatch. 1880. 100. When a patent issued to the complainant, and there existed an assignment from him to another, which was claimed to be broad enough to include the patent in question, and there was 44 ASSIGNMENT. a dispute between the complainant and such other as to such assignment, the court refused to solve doubts in favor of the defendant, who was a third party, as regards such assignment. Qraham v. Geneoa Lake Crawford M'fg Go., 11 Fed. Rep. 138.— Dyer, 1880. Qraham v. Me- Cormicket al., lOBissell, 39. — Dktjmmond, 1880. 101. A patentee made a grant to complainants of two counties under his patent, which grant was not duly recgrded in the Patent Office. The patentee subsequently made an assignment to the defendant^, with operative words as follows : " Do hereby grant and convey to the said all my right, title, and interest in and to said let- ters-patent in the following described territory. " It was held that defendants did not take the said two counties. Turnbull et al. v. Weir Plough Co. et al., 9 Bissell, 334.— Dkummomd, 1880. 103. For a state of facts which deprived an assignee of the right of reverter of the patent, see — . Buckley et al. v. Sawyer M'fg Co., 2 McCrary, 350.— Treat, 1881. 103. An assignment of a patent not specially referred to in an assignment gives an equitable title only. Wright, Jr., v. Eandel et al., 19 Blatch. 495.— Blatchford, 1881. 104. For a set of circumstances where defend- ant's legal title to a patent was upheld as against complainant's equitable title, on account of lack of actual notice to defendants, see — . — lb. 105. The granting of a reissue to the plaintifE is suiBcient proof of his title to sue. Wooster V. Clarketal.,9Fed. Rep. 854. — Elatchford, 1881. 106. The absence of the seal of a corporation from an assignment does not render it invalid or void, for the law does not require a seal to such an instrument. Gottfried v. Miller, 104 U. S. 521.— Sop. Ct. 1881. 107. A patent owner having assigned the pat- ent to two persons jointly, in trust, one of such assignees has no power to make an assignment of interest in the patent. Weatcott et al. v. Wayne Agricultural Works et al., 11 Fed. Rep. 398.— Grbsham, 1882. 108. " The mere assignment of a patent would give the assignees no right to damages or profits already accrued." Merriam v. Smith et al., 11 Fed. Rep. 538.— Lowell, 1882. 109. By the court : " I thfcik that the assign- ment to make and sell includes necessarily the right to use the thing patented, because without the right to use, the right to make and sell would be a barren right." Turnbull et al. v. Weir Plough Co. et al., 9 Bissell, 334. — Drummonti, 1880. 110. By the court : " Under the statute of this state, the assignments of the patent, duly ac- knowledged before a notary, were sufficiently proved ; but it was not incumbent upon the com- plainant to prove the signatures of the assignees. " [This was the state of New York.] N. T. Pharmical Ass'n v. Tilden ei al., 21 Blatch. 190.— Wallace, 1883. 111. An inventor made application for a pat- ent in 1837, and assigned away an undivided in- terest in the patent to issue thereon. The appli- cation was rejected and never renewed. Con- gress gave a patent to the heirs of the inventor in 1878. Held, that the assignee of 1852 took no interest in the patent of 1878. Mre Ex. M'fg Co. V. Graham, 16 Fed. Rep. 543.— Hughes, 1883. ' 113. Complainant's invention was patented and assigned to defendant under an agreement that complainant should pay the value thereof, to be determined by an arbitration, which arbitration defendant sought, but complainant would not have. Complainant sought an injunction to pre- vent defendant exercising any right under such patent. Held, that complainant had no case against defendant. Perkins v. U. S. Electric Light Co., 24 O. G. 304.— "Wallace, 1883. 113. A woman who is a resident of New York can alone, without her husband, make a legal assignment of a patent Fetter et al. v. Newhall, 21 Blatch. 445.— Wheelbb, 1883. 114. " The reissue patent ran directly to the orator, and was founded upon assignments en- titling him to it, and the production of it would show prima facie that all the preliminary steps had been taken." Woostery. Muser et al., 30 Fed. Rep. 163.— Wheeler, 1884. 115. " No guaranty of. title is binding against the setting up of unfounded claims." Shaw V. Soule et al., 30 Fed. Rep. 790.— Wheeler, 1884. 116. A trust assignment executed in and under the laws of the state of New York, pre- vented either of the parties of the first part from transferring any interest in the legal title to the patent during the unexpired term to third per- sons, and in the event of the death of either party, prevented his legal representatives from doing so ; to this extent it appeared to suspend the power of alienation for a period longer than the two lives who created the trust. The court held that " such a restrictipn upon the right of joint owners to deal with their property is not objectionable, " and the statutes prohibiting per- petuities have no application to the case.— /6. 117. The conveyance by which complainants held their title to the patent in suit did not transfer to complainants the right to vend to I others the privilege of making the patented art!- ASSIGNMENT. 45 cle. But that right was not reserved in the in- strument, and as complainants were vested with the exclusive right to make the article in the United States, as well as to use and vend it, the patentees were held to have nothing left which they could transfer, and the complainants were held to be assignees under the patent. Kck- liardt et al. v. Packard, 23 Blatch. 23.— Wal- lace, 1884. 118. " The rule that a receiver cannot convey a title to a patent unless the owner of the fegal title join, as held in Gordon v. Anthony, 16 Blatch. 234, does not apply to the transfer of a mere equitable title." Adams et al. v. Howard et al., 23 Blatch. 27.— Wallace, 1884. 119. A, being an inventor, and applicant for patent, assigned his patent, yet to issue, to B. B assigned to C. C assigned to D. All the as- signments were recorded before the patent is- sued. The patent issued to B. On demurrer it was held that the patent was valid ; that D Lad a good title, and might sue thereon. Consoli- dated Electric Light Go. v. Edison Electric Light Co. et al., 23 Blatch. 412.— Wallace, 1885. 120. "The patent may issue to the person who, by the records of the OfBce, is assignee of the patent, although not technically the assignee of the inventor. " — Lb. 121. " It is not mandatory . . . that the pat- ent run in form to the person who is the owner of the invention, according to the records of the Office, at the time when the patent issues." — Lb. 122. "Inasmuch as the grant" of a patent ",runs to the grantee named in the patent, and his assigns, and operates, therefore, in .favor of the ultimate assignee, to convey him a record title as completely as if he had been named in the patent, and as it is not essential that the grantee named be one who owns the invention when the patent issues, it should be held that a patent is valid when issued to any assignee of record." — Lb. 123. In a contract one party "further cove- nanted that if he did not purchase and pay for the said letters-patent within one year from the date of the agreement, as before provided, he would, at the expiration of the year, cease from the manufacture of said tilts, and would turn over and surrender promptly to the Connollys all patterns gotten up by him for the manufac- ture of tilts embracing said improvements, and would assign to them the entire right, title, and interest in any and all improvements upon the invention shown and described in the said let- ters-patent, or relating thereto, which he might make or patent." Thereof the court said: " The fair import of the language used is that only those improvements should become the property of the complainants which were made upon the invention or patent before the termi- nation of the contract." The Connollys' patent was upon tilting chairs. The improvement made by the said covenanting party was in rocking chairs, and were held not within the agreement. Bunker et al. v. Stevens, 26 Fed. Eep. 245.— Nixon, 1885. 124. " The assignment of an extension before the same is granted vests the extension in the assignee." Adams et al. v. Bridgewater Lron Co., 34 O. G. 1045.— Colt, 1886. 125. A party owned the title of record to a patent for over six months, and conveyed it, for a money consideration, to another party, whose title was also recorded in the Patent Office. It was held that the latter title could not be at- tacked on the ground of fraud on the part of the party first mentioned. Bacine Seeder Co. V. Joliet Wire-Check Bower Co., 27 Fed. Rep. 367. — Blodgett, 1886. 126. Where a conveyance under a patent car- ries the whole title, reserving to the grantor a right in the nature of a license, the paper is an assignment. Hobbie et al. v. Smith et al., 27 Fed. Rep. 656.— Coxe, 1886. 137. An assignment by an inventor of his " right, title, and interest in said improvement," without more, does not carry to the assignee a title to an extension of the original patent. John- son v. Willcox & Gibbs Sewing-Mach. Co., 23 Blatch. 531.— Wallace, 1886. 128. " When an assignment is made pending an application, or in contemplation of an appli- cation for letters-patent, it is fair to assume that the parties contract with reference to the legal title which they expect will then be granted." —Lb. 129. " The word ' invention ' or ' improve- ment, ' when used in reference to a pending ap- plication, naturally refers to the subject-matter of the expected grant, and would seem more ap- propriately to refer to that alone than to a possi- ble future title which may be granted out of per- sonal consideration for the inventor. ' ' — Lb. 130. Two patentees, Kearney and Tronson, gave to one John H. Immer a paper, as fol- lows : " To all wlwm it may concern : This certi- fies that John H. Immer is fully authorized and empowered to make any contract with the Cen- tral Railroad of New Jersey that may be bind- ing on our part, for the sale of the patent-right on spark arrester, as secured to us by letters- patent 113,528, dated April 11th, 1871, and re- issue 5184, dated December 10th, 1872, he hav- ing one third equal interest with ourselves in the 46 ASSIGNMENT. said patent. " Meld, tliat the true intent was' that Immer was entitled to one third the proceeds of sales ; this paper was held not to be an assign- ment. Kearney et al. v. Lehigh Valley R. B. Co., 37 Fed. Rep. 699.— Nixon, 1886. 131. A patent was granted to one Sweet. One Smith assumed to make a conveyance thereun- der. The instrument, in the first clause, de- • scrihed Smith as party of the first part. The second clause recited that Smith, by power of attorney from Sweet, became the attorney of Sweet. The third clause recited that one Ma- chesney desired to purchase, and that Smith as- signed and set over all the right, title, and inter- est that said Sweet has. Then followed a clause that Smith had set his hand and seal to the in- strument which was signed "J. E. Smith, ' ' and a seal was affixed. Thereupon the court said : "The assignment must be held to be inoperative to pass the title of Sweet, upon the well-settled rule that a sealed instrument, when executed by one acting as an attorney, must be executed in the name of the principal. It is true that an as- signment of a patent for an invention is valid without a seal. This is so because the statute which creates the property in inventions, and regulates the manner of transferring the title, only requires an assignment to be in writing. But such an assignment is a muniment of title to incorporeal property, and, whether under seal or not, the question whether, when executed by an attorney, it is in form to bind the principal, is to be determined by the rule applicable to deeds and formal instruments under seal." Machesney v. Brown et al., 39 Fed. Rep. 145. — Wallace, 1886. 133. A conveyance read as follows : " ' I hereby sell, assign, transfer, and set over unto the said Asa L. ^hipmau's Sons, their sucbessors and assigns, all the right, title, and interest, claim or demand, of any character or description, legal or equitable, which I have in, to, under, or by virtue therefor aforesaid, the same being the _ entire interest in said letters-patent.'" This conveyance was defeasible by a payment to be made on a certain date. Meanwhile it was held to be an assignment cari-ying a title on which suit might be brought. Waterman v. Mackenzie •et al, 39 Fed. Rep. 316.— Coxb, 1886. 133. It seems that the assignment of a bank- rupt's patent', made by his duly-appointed as- signee, is a legal assignment. Kittle v. Sail et al., 39 Fed. Rep. 508.— Coxe, 1887. 134. An assignment made by the administra- tor of Edwin May, deceased, conveyed " all the right, title, interest, claims, and demands what- soever, which the estate of said Edwin May, de- ceased, has in, to, by, under, and through the said improvements and the letters-patent and exten- sions thereof." It was held that this assignment did not carry with it the right of action for in- fringement of patent while Edwin May was the sole owner thereof. May v. Juneau Go., 30 Fed. Rep. 341.— Btjnn, 1887. 135. Where A, an inventor, has made appli cation for patent and assigned his patent to issue to B, and the assignment has not been recorded, and Iheanwhile C, with full knowledge, takes an assignment from A and gets the patent to issue in C's name, B is entitled to have the patent a.s- signed to him. Pontiac Knit Boot Co. v. Merino Shoe Co., 31 Fed. Rep; 386.— Webb, 1887. 136. An assignment which refers to an appli- cation for patent, and conveys an undivided part " of the full and exclusive right to the invention, as fully set forth and described in the invention, ' ' covers all that is so described, even though such application may afterward be split up into differ- ent applications. Puetz v. Bransford, 31 Fed. Rep. 458.— Thayer, 1887. 137. " A naked assignment, to assign in gross a man's future labors as an author or inventor — in other words, a mortgage on a man's brain — binds all future products, does not address itself favorably to our consideration." But if such an agreement is based upon a valuable consid- eration, and is in connection with a basic patent or machine, it is a valid agreement. Aspinwall Mfg Co. V. Gilletal., 40 O. G. 1133.— Brad- ley, 1887. 138. An assignment used the following lan- guage : " I, the said George F. McGinnis, as ad- ministrator of the estate of Edwin May, deceased, have sold, assigned, transferred, and set over, and do hereby sell, assign, transfer, and set over unto the said Sarah May, all the right, title, in- terest, claims, and demands whatsoever which the said estate of said Edwin May, deceased, has in, to, by, under, and through the said improve- ments, and the letters-patent and extensions thereof therefor aforesaid." This was held to carry the right to sue for part damages and profits. May v. Saginaw Co., 33 Fed. Rep. 639. —Brown, 1887. 189. An assignment of a patent, after convey- ing the same, proceeded, " with all the improve- ments I may hereafter make, without further cost. ' ' This was held to be a valid contract, and carry with it all improvements in that line which the patent owner afterward made. Aspinwall M'fg Co. V. Oill et al, 33 Fed. Rep. 697.— Bradley, 1887. 140. " If the assignment of improvement to be made in future does not convey a legal inter- ATTOKNEY. 47 est in a patent taken out*for such future im- provement, yet, if valid at all, it certainly con- veys an equitable interest, entitling the assignee to call upon the holder of the legal interest for an assignment thereof to the extent of the equity." — lb. 141. " Assignments in future improvements upon a machine, in connection with the assign- ment of a patent for such machine, are vaUd." —lb. 142. For an example of an assignment of a patent held good against a prior contract assign- ing the same, see — . N. T. Paper Bag Macli. Go. V. Union Paper Bag Mack. Go., 32 Fed. Bep. 783.— Bdtlkk, 1887. 143. A conveyance under a patent vras in the following words : " The party of the first part has sold, assigned, and transferred, and by these presents does sell, assign, and transfer to the party of the second part, all his right, title, and interest in and to the said improvements, as se- cured to him as aforesaid, for, to, and in all parts of the United States and territories lying east of the Rocky Mountains ; . . the same to be held and enjoyed by the said party of the second part within and throughout the above-specified territory, but not elsewhere, for his own use and behoof, to the end of the term for which said letters-patent were granted." This was held to give the assignee a right to sue. Beibert Gylin- der Oil-Gup Go. v. Beggs, 83 Fed. Rep. 790.— Lacombe, 1887. ATTORNEY. Cases. 1. Where a party is employed as an attorney for Patent Office work, he is at liberty to be employed in the same capacity by different par- ties in relation to the same general subject-mat- ter. Hoffheins et al. v. Brandt, 8 Fish. P. C. 218.— Giles, 1867. 2. As to whether restitution may be compelled from an agent employed to sell his partner's patent, when he acts fraudulently in reference thereto, see — . Jeffries v. Weister et al., 2 Saw- yer, 135.— Sawyer, 1871. 3. Where a party, by his own conduct and ac- tion, enables his agent to make a contract with another party which is wrongful, so far as the first party and the agent are concerned, the party first mentioned will have to abide by the action of the agent. Larabee et al. v. Peoria, Pekin & Jacksonmlle B. B. Go., 8 Baun. & Ard. 180.— Dkitsimond, 1877. 4. Where one party is actually the agent or attorney of another, it is not material whether the agent signs his own name as agent or signs the name of the principal, following with his own name as agent. — lb. 5. In an attempt to secure a rehearing and new trial, it would be unsafe and unjust, not only to the complainant, but also to the solicitor, to assume that the solicitor has not done his. full duty, without proof to that effect. Ingersoll v. Benham et al., 8 Bann. & Ard. 179. — Wheel- er, isii. 6. Where an original specification, in an ap- plication on which a patent is sued, had been amended by filing substantially a new one, writ- ten by an attorney who had not received a prop- er power from the proper party, it was held that such informalities were cured by the issue of the patent, and that the action of the Commis- sioner therein could not be inquired into in an action for infringement. Jloe et al. v. GottrcU et al, 17 Blatch. 546.— Shipman, 1880. 7. An amendment to an application for a pat- ent made by the inventor's attorney after the in- ventor's death, and without the sanction of the administrator, is without authority. JSagletov, M 'f'g Co. V. West, Bradley & Gary M'fg Go. et al., 18 Blatch. 218.— Wheeler, 1880. 8. " An answer in equity is required for dis- covery as well as for grounds of defence, and evidence cannot be given by an attorney ; there- fore an answer cannot be made by an attorney, ' ' and an answer thus made is irregular. Wooster V. Muser et al., 20 Fed. Rep. 162. — Wheeler, 1884. 9. Where, after the filing of an application for a patent, the applicant's solicitor changed the claim without authority, and so as to include a feature which the applicant did not invent, the change was held fatal to the patent. MilU- gan v. Lalance & Orosjean M'fg Co., 21 Fed. Rep. 570.— Wheeler, 1884. 10. Where, pending an application for a pat- ent, the claims have been changed, such change in the claims is proper where the specification' fairly indicates all that was put into the changed claims from time to time in order to embrace everything which was specified at the start. And this may be done by the inventor's attorney.* Bailway Begister M'fg Go. v. North Hudson Gounty B. B. Go. et al., U Fed. Rep. 798.- NixoN, 1885. 11. Where a man, without authority, revived the application for patent of another person, signing as attorney, and the other person after- ward ratified this action, such action was held to be null and void until the date of the ratification. 48 CAVEAT. Con. Vruit Jar Co. v. Bellaire Stamping Co., 35 O. G. 627.— Sage, 1886. 12. A local solicitor for the defendant in one hundred and sixty-four cases, under the vul- canite patent, in Maine, New Hampshire, and Massachusetts, charged for services and disburse- ments $6338.83, being $49.67 for each successful case, and $9.84 for each unsuccessful case, less than $3 in each case coming out of the real com- plainant, the Goodyear Dental Vulcanite Com- pany, the balance being recovered as costs. The court held that the amount was reasonable. Celluloid M'fg Co. v. Chandler, 27 Fed. Rep. 9. —Webb, 1886. 13. As regards the prosecution of an applica- tion for a patent, the applicant is bound by the acts of his attorney. Doison v. Lees, 80 Fed. Rep. 625, per curiam, 1887. CAVEAT. " Caveat" in the Patent Acts. Act approved July 4th, 1836. Section 12. And be it further enacted. That any citizen of the United States or alien, who shall have been a resident of the United States one year next preceding, and shall have made oath of his intention to become a citizen thereof, who shall have invented any new art, machine, or improvement thereof, and shall desire further time to make the same, may, on paying to the credit of the Treasury, in manner as provided in the ninth section of this act, the sum of twenty dollars, file in the Patent Office a caveat, setting forth the design and purpose thereof, and its principal and distinguishing characteristics, and praying protection of his right till he shall have matured his invention ; which sum of twenty i dollars, incase the person tiling such caveat shall i afterward take out a patent for the invention therein mentioned, shall be considered part of the -sum herein required for the same. And such caveat shall be filed in the confidential archives of the office, and preserved in secrecy. And if application shall be made by any other person within one year from the time of filing such caveat, for a patent of any invention with which it may in any respect interfere; it shall be the duty of the Commissioner to deposit the de- scription, specifications, drawings, and model, in the confidential archives of the Office, and to give notice, by mail, to the person filing the caveat, of such application, who shall, within three months after receiving the notice, if he would avail himself of the benefit of his cdveat, file his description, specifications, drawings, and model ; and if, in the opinion of the Commis- sioner, the specifications of claim interfere with each other, like proceedings may be had in all re- spects as are in this act provided in the case of interfering applications. [Repealed July 8th, 1870.] Act approved March 3d, 1861. . . . The three months' notice given to any caveator, in pursuance of the requirements of the twelfth section of the act of July fourth, eighteen hundred and thirty-six, shall be computed from the day on which such notice is deposited in the post-office in Washington, with the regular time for the transmission of the same added thereto, which time shall be endorsed on the notice. [Repealed July 8th, 1870.] (This act makes a caveat fee $10, and provides that it shall not ap- ply on an application for patent.) Act approved July 8th, 1870. Sec. 40. And be it further enacted, That any citizen of the United States, who shall have made any new invention or discovery, and shall desire further time to mature the same, may, on payment of the duty required by law, file in the Patent Office a caveat setting forth the design thereof, and of its distinguishing characteristics, and praying protection of his right until he shall have matured his invention ; and such caveat shall be filed in the confidential archives of the Office and preserved in secrecy, and shall be operative for the term of one year from the filing thereof ; and if application shall be made within one year by any other person for a patent with which such caveat would in any manner inter- fere, the Commissioner shall deposit the descrip- tion, specification, drawings, and model of such application in like manner in the confidential archives of the Office, and give notice thereof, by mail, to the person filing the caveat, who, if he would avail himself of his caveat, shall file his description, specification, drawings, and model within three months from the time of placing said notice in the post-office in Washington, with the usual time required for transmitting it to the caveator added thereto, which time shall be endorsed on the notice. And an alien shall have the privilege herein granted, if he shall have resided in the United States one year next pre- ceding the filing of his caveat, and made oath of his intention to become a citizen. [Repealed June 23d, 1874.] Act approved June 33d, 1874. Sec. 4903. Any citizen of the United States who makes any new invention or discovery, and desires further time to develop the same, may. on payment of the fees required by law, file in CLAIM. 49 the Patent Office a caveat setting forth the de- sign thereof, and of its distinguishing character- istics, and praying protection of his right until lie shall have matured his invention. Such caveat shall be filed in the confidential archives of the Oflace and preserved in secrecy, and shall be operative for the term of one year from the fiUng thereof ; and if application is made within the year by any other person for a patent with which such caveat would in any manner inter- fere, the Commissioner shall deposit the descrip- tion, specification, drawings, and model of such application in like manner in the confidential ar- chives of the Office, and give notice thereof, by mail, to the person by whom the caveat was filed. If such person desires to avail himself of his caveat, he shall file his description, specifica- tions, drawings, and model within three months from the time of placing the notice in the post- office in Washington, with the usual time re- quired for transmitting it to the caveator added thereto ; which time shall be endorsed on the notice. An alien shall have the privilege herein stated, if he has resided in the United States one year next preceding the filing of his caveat, and has made oath of his intention to become a citizen. Cases. 1. Although a patent maybe issued to another while applicant's caveat is on file, with no notice to the caveator, the patent is not thereby invali- dated. Cochrane v. Waterman, 1 Mac Arthur's P. C. 53.— Cranch, 1844. 2. The filing of a caveat does not prevent the running of time as regards the defence of two years' public use. Bell v. Daniels et al., 1 Bond, 212.— Leavitt, 1858. 3. A caveat is not proof that the improvement described was not perfected, in a patentable sense, at the time of filing the caveat. Johnson V. Root, 1 Fish. P. C. 351.— Sprague, 1858. 4. It seems that, in construing a patent, the inventor's previous caveat may be taken into consideration. Goodyear et al. v. Mullee et al. , 5 Blatch. 429.— Blatch. 1867. 5. A caveat which does not show a mode of reducing the suggested invention to practice will not avail to carry the afterward patented invention back to the caveat. Benwick et al. V. Cooper etal., 10 Bissell, 201.— Blatch. 1872. 6. The obvious design of a caveat " is to afford to inventors an opportunity of perfecting their discoveries and inventions." Am. Nic. Pave- ment Co. V. City of Elizabeth et al., 6 Fish. P. C. 434.— Nixon, 1873. 7. A caveat mistakenly filed as for a sole in- vention does not preclude a subsequent joint patent. Hoe et al. v. KaUer, 20 Blatch. 430.— Blatch. CHAMPERTY. Cases. 1. An agreement between a patent owner and another party, whereby the latter is to sue and collect for infringements at his own costs and make definite payment to the former, is void for champerty and is against the policy of the law. Wintermute v. Humphrey et al., 10 West. L. J. 52.— Stili/Well, 1851. 2. A patent owner gave to another person the exclusive right to collect damages and profits for infringement of the patent, the latter to bear all the expenses except that, in case of failure to recover, the patent owner was liable to pay the taxable costs. The party to whom this right was given was to have half the gross amount col- lected. This contract was held to be void for champerty and maintenance. Oregerson v. Im- lay, 4 Blatch. 503.— Shipman, 1861. CHEMICAL EQUIVALENT. Chemical Equivalent. [See " Equivalent, Chemjcal. "] CLAIM. " Claim" in the Patent Acts. Act approved April 10th, 1790. Section 2. This section provides - that the specification shall " distinguish the invention or discovery from other things known or used." [Repealed February 31st, 1873.] Act approved February 21st, 1793. Sec. 3. This section provides that the applicant for patent shall deliver " a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known, and to en- able any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound, and use the same. And in the case of any machine, he shall fully explain the principle, and the several modes in which he has contemplated the appli- cation of the principle or character by which it may be distinguished from other inventions; 50 CLAIM. and he shall accompany the ■whole with draw- ings and written references, where the nature of the case admits of drawings." [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 6. This section provides that the appli- cant shall deliver " a written description of his invention or discovery, and of the manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity, as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same ; and in case of any machine, he shall fully explain the principle, and the sev- eral modes in which he has contemplated the ap- plication of that principle or character by which it may be distinguished from other inventions ; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery." Eepealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 26. This section provides that the appli- cant for patent " shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery ; and said specification and claim shall be signed by the Inventor and attested by two Witnesses." [Repealed June 22d, 1874.] Act approved June 32d, 1874. Sec. 4888. This section provides that the ap- plicant for patent in his specification ' ' shall par- ticularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. ' ' Cases. 1. If a patent is for the whole machine, when the improvement is of a part of the machine only, which, as a whole, previously existed, the patent is too broad and is void. Woodcock V. Parker et al., 1 Gall. 437.— Stoky, 1813. 2. A combinatidti of old parts, or an added effect, will not support a patent for a new ma- chine. Whittemore et al. v. Cutter, 1 Gall. 478. — Stokt, 1813. 3. " If a patent be taken out for an entire ma- chine, when the invention consists only of an im- provement on such machine," the patent is not void, but " the patentee is not entitled to more than his improvement. " Ooodyear v. Matthews, 1 Paine, 300.— Livingston, 1814. 4. An inventor of an improvemont on a ma- chine is only entitled to a patent for the improve- ment. ' If he patent the whole machine, his pat- ent is void. OMorne v. WinJdey, 2 Gall. 51. — ■ Stobt, 1814. 5. The specification is in part for descriptive purposes, but a claim made therein cannot de- fine the extent of the monopoly ; that must ap- pear in the body of the patent [in the grant signed by the government officials]. Ecans v. Eaton, 1 Peters' C. C. 322.— Wash. 1816. 6. It is essential to distinctly define the inven- tion in order to know whether it ought to be patented, and to know what will infringe. Lowell V. Lewis, 1 Mason, 182.— Story, 1817. 7. Whether an invention is distinctly defined is a question of law upon the construction of the terms of the patent. — lb. 8. Oliver Evans's patent for improvement in the art of manufacturing flour, etc. , dated Jan uary 22d, 1808, cannot be sustained as a claim for improvements, because it does not point out in what the improvements consist. Evans V. Hettick, 3 Wash. 408.— Wash. 1818. 9. Oliver Evans's patent of January 22d, 1808, is for (1) the combination of the machines, (2) the several machines, (3) improvements on the several machines. — lb. 10. A patent may be good as to a part, though unsound as to another part. Eeans v. Eaton, 3 Wash. 443.— Wash. 1818. 11. A specification must point out in what the improvement consists. This cannot be done by parol evidence. — lb. 12. A specification must define the invention. If the court cannot say what the patent claims, it is void for ambiguity. Barrett et al. v. Rail et al. 1 Mason, 447.— Story, 1818. 13. It seems that the extent of the grant may be defined in the specification. Evans v. Eaton, 3 Whart. 454.— Sup. Ct. 1818. 14. If a thing which is claimed, no matter how important, be not new, the patent is void. Moody V. Piske et al., 3 Mason, 112.— Story, 1820. 15. The patent must point out in what the invention consists. Dixon v. Moyer, 4 Wash. 68.— Wash. 1821. 16. The patent must distinguish the old from the new. Isaacs v. Cooper et al. , 4 Wash. 259. —Wash. 1821. 17. A patentee ought to describe what his own improvement is, and to limit his patent to such improvement. Eoans v. Eaton, 7 Wheat. 356. —Sup. Ct. 1822. 18. If the patentee fully describe the construc- tion of his machine and then claim it in general terms, without a precise discrimination of the difference from prior machines, that is suffi- cient. — lb. CLAIM. 51 19. " The improvement patented must be the improvement invented. ' ' Whitney et al. v. Em- mettet al., 1 Bald. 303.— Hopkinbon & Bald, 1831. 20. Defects and obscurities in description will be overlooked if the court can make out the thing patented. — lb. 21. If the court cannot make out the limits of the invention without resorting to conjecture, the patent is void. A tautologous phrase may be disregarded. Ames v. Howard, 1 Sumner, 482.— Story, 1833. 22. Ambiguities and uncertainties which do not prevent the court from ascertaining the limits of the invention are not fatal. Ryanetnl. V. Ooodwin etal., 3 Sumner, 514. — Story, 1839. 23. In making a claim, " no precise form of words" need be used. "It is sufficient if the court can ascertain, by fair interpretation, what he [the patentee] intends to claim, . . . even though the expressions are inaccurately or im- perfectly drawn." Wyeth et al. v. Stone et al., 1 Story, 373.— Story, 1840. 24. By the court : " This claim, then, for ' the particular method for the application of the principle, ' although inartificial, may be reason- ably interpreted as expressive of a distinct claim of each particular method set forth." " I deem the patent, then, to be a claim for each dis- tinct machine. " — lb. 25. Although in its title a patent be professedly for " a new and useful improvement" [in the .singular number] , a plurality of claims, covering different parts, may be made in the patent. Pitts V. Whitman, 3 Story, 609.— Story, 1843. 26. ' ■■ A patentee should describe with reason- able certainty his invention. Several reasons exist for this. One is, the act of Congress itself requires tliat he ' shall particularly specify and point out the part, improvement, or combination which he claims as his own invention,' act of July 4th, 1836. . . . And another is, that unless this is done, the public are unable to know whether they violate the patent or not. " DavoU et al. V. Brown, 1 W. & M. 53.— Woodbtjry, 184^. 27. " We can resort to the introduction to the specification, as well as the summing up at the close, to ascertain the true extent of the claim. ' ' Hovey v. Steiiens, 1 AY. & M. 290.— Woodbury, 1846. 28. " Where there is a summary, setting out a claim to some particular novelty, liiat is to govern. But if it refers to other parts of the specification and drawings, those parts are to be examined in connection with it, in order to as- certain what is claimed in the summary as the new improvement." Hovey v. Stevens, 3 W. & M. 17.— Woodbury, 1846. ,' \ 39. Whatever the patentee's particular mode is ' ' must be plainly stated ; because the public, when making or using similar machines, has a right to know, first, what he claims to have patented or invented as new — whether new parts or combinations only, and, if new parts, what new ones ? and if new combinations, of what old parts ? So the persons whom a pat- entee prosecutes have a right to know clearly what they have to defend against — a claim of new parts or new combinations ? and if of either, the specific parts which are set up as new, or which are set up as brought into a new combina- tion." " So the act of Congress requires this. What is claimed as new or an improvement is to be set out substantially, in order that the Commissioner of Patents may judge if it be new, so as to issue a patent, and courts may see whether it is new in the trials contesting it. It is neces- sary to be done also to see if he claims anything before known or not ; or, in other words, too much." "Hence saying that the patentee has made an improvement in certain machinery, without distinguishing what it is, or what part is new, has been adjudged to be bad." — lb. 30. The improvement ' ' must not only be dis- tinguished, but so distinguished as to be intelligi- ble, unambiguous, accurate.!' The courts will " be as indulgent to patentees in describing their claims as is consistent with the rights of the public and of other inventors, and the impera- tive requirements by Congress. ' ' In order to ob- tain clearness and exactness, they should not be confined to technical language, but encouraged to make use of words in popular use. " Nor in most cases are they to be restricted to any par- ticular part of their specification, but may re- sort for light to all portions of it and the draw- ings. " — Ih. 31. " If a patent cover matter not patentable, the whole patent is void." Blake v. Sperry, 2 N. Y. Leg. Ob. 351.— Judsok, 1843. 33. " When a patent is obtained for parts of a machine involved with other parts which may have been used before, it Is essential that the new parts should be so distinctly pointed out that the claim may not cover any parts which are old." — lb. 33. "It is essential that the part improved should be so distinctly stated as to be distin- guished from every other part of the machine." Brooks et al. v. Jenkins et al., 3 McLean, 432. — McLean, 1844. 34. " Unless the thing claimed to be invented is so described as to be known in the language 53. CLAIM. Df the statute from every other thing, the patent is void. But this must be determined by the coiirt.'' — lb. 35. There are reasons for requiring exactness in a claim, to wit : that when the specification is presented, the Commissioner of Patents may be enabled to judge correctly whether the improve- ment claimed is new or too broadly claimed. Also to enable courts, when it is contested before them, to form a like judgment. Also so that the public, while the term continues, may be able to understand what the patented thing is, and refrain from its use unless licensed. Hogg et al. v. Mrmrson, 6 Howard, 437. — Sup. Ct. 1848. _^ 36. " The propulsive effect of vortical motion of water in a reaction wheel, operating by its centrifugal force, and so directed by mechanism as to operate in the appropriate direction, . . is a valid subject of claim, and properly to be se- cured by letters-patent." Parker v. Hulme, 7 West. L. J. 417.— Kane, 1849. 37. What an inventor " does not, or certainly what, in the misty future, he cannot describe, he must be presumed not to have invented. ' ' Smith V. Downing et al., 1 Ksh. P. C. 64. — Wood- BUHY, 1850. 38. Plaintiff's patent in suit was for a travel- lers' lock, and a claim thereof was : " What I claim as my invention, and desire to secure by letters-patent, is the combination of the bar A, having the edges EE, with the stop or rest B, having the lips P and G- constructed and ar- ranged as described. I further claim the com- bination of the cap D with the bar A, the effect of "the cap being to fill up the space between the edge of the door when closed, and the casing as described, all for the purposes and constructed in the manner substantially as set forth in the accompanying specifications and drawings." The drawings annexed showed the lip G as turned on the end of the brace C. The claim was erroneous in calling the lip G part of the rest B. The question was whether the error was fatal. It was held not to be fatal. Kittle V. Merriam, 3 Curtis's 0. C. 475. — Cuhtis, 1855. 39. " It is sufilcient if what is claimed as new appears with reasonable certainty on the face of the patent and specifications, or by necessary im- plication. " Wintermute v. Bedington, 1 Pish. P. 0. 239.— Wilson, 1856. 40. Although parts described in a patent may be old, if they are not distinctly claimed it is not necessary to expressly state that they are old. Winans v. N. Y. & Erie B. B. Co., 1 Fish. P. 0. 313.— Hall, 1856. 41. The requirement of certainty in a claim is for the purpose of enabling the public to un- derstand precisely what has been secured' to the patentee. Ooiwner v. Boach et al., 4 Msh. P. 0. 13.— Hall, 1857. 43. A patent for a sewing-machine claimed a combination consisting of three elements— name- ly, " a table or platform ; . . . a sewing mech- anism proper, . . . and a mechanical feed auto- matic. ..." This was held to be a proper claim. Potter et al. v. Holland, 4 Blatch. ^38. — Ingbr- soll, 1858. 43(J. A claim v^as : "3. The upright sta- tionary bolt, or bolt and scourer combined, with its top or Cover, or in combination with clainis 1 and 3 and 4, or either of them, or their equivalents, to produce like results in the flour- ing process." The;reof the court said: "The third claim is good for nothing on account of its uncertainty." Oa/rr v. Bice, 4 Blatch. 300. — Nblson, 1858. 436. A claim was : "4. The use of the re- volving, distributing, scouring, and blowing cylinder of beaters and fans, by which the mate- rial is distributed, scoured, and the flour blown through the meshes of the bolting cloth. " This claim was held void, as being a " claim to a legal result. "—J5. 43. The claim in plaintiff's patent was : " I claim the clamps 6 6 to prevent end expansion, and the levers 7 7 working on fixed fulcrums, when in operation, all substantially and for the purpose set forth in the foregoing specification." Thereof the court said : " The plaintiff's claim is not for a combination, but for two distinct im- provements in the art of bending wood. " Mor- ris V. Barrett et al.,\ Bond, 354.^Lbavitt, 1859. 44. The claim of the application for the patent in question was : " What I claim as my inven- tion, and desire to secure by letters-patent, is the hulling and breaking cylinder B, provided with the serrated arms hb, or their equivalents, and driven at different speeds, as herein specified, in combination with the containing cylinder A, constructed and operating substantially as de- scribed." The machine was a corn breaker. The only point of novelty was the adjustment of the size of the holes in the outer cylinder so as to permit the due escape of the hominy by means of the requisite adjustment of the parts to the velocity of movement of the cylinder, from one rate of revolution to another rate at different stages of the manufacture ; it was held that the claim did not cover the real improvement. Davis, William, In Be, 1 MacArthur's P. 0. 638.— MORSBLL, 1859. 45. A claim was : " What I claim as my in- CLAIM. .53 vention, and desire to secure by letters-patent, is the application to circular saw frames, of rocker boxes and swing frame, as herein set forih, and suspending said frame in position by means of the driving belt, as above described, for the free and successful operation of the saw by the mo- tion before mentioned." The court held this claim to be a single claim for a combination of all the elements mentioned. Leeetal. v. Blandy et al., 1 Bond, 361.— Lbavitt, 1860. 46. The claim in complainant's patent was : "The forming of the seam," etc. This was held to be a claim for the mechanism. Sbwe v. Morton et al., 13 M. L. R. 70. — Spragde, 1860. 47. A claim for "imparting a coexisting movement to two reciprocating catch pieces in the operation of trip, cut-off valves, " is in terms "for an effect or function, and therefore not patentable." Sickles -v. Falls Co. , 4 Blatch. 508. —Nelson, 1861. 48. The existence of two claims for the same thing in the same patent does not render the patent void. Tompkins v. Oage et al., 5 Blatch. 368. — Shipman, 1865. 49. The claim in complainant's patent upon a camera was : "Bringing the different portions of a single plate or several plates successively into the field of the lens of the camera." Thereof the court said . ' ' Patent of the complainants is not for a principle or result, but for a means described for accomplishing the result, and, con- sequently, is valid." Wing v. Richardson, 3 Clifford, 449.— Clipfohd, 1865. 50. A patent may properly have various claims of invention. Sioift et al. v. Whisen et al., 3 Bond, 115.— Lbavitt, 1867. 51. " Ambiguity, which defies construction to elucidate, is fatal, and it is unimportant whether it had its origin in the mala fides of the patentee or in the haste or incompetency of the drafts- man." Blake Y. Stafford, 6 Blatch. 195.— Ship- man, 1867. -53. " The claim governs the patent, and in order to ascertain what is patented, reference must be had to the claim. " Haselden-^. Ogden, 3 Fish. P. C. 378.— Sheeman, 1868. 53. Although a claim may be in form func- tional and for a result, as for " the discharging, " etc., it will be cohstrued as a claim for " the par- ticular organization and devices described, by means of which the specified result is produced, and therefore valid and effectual to the extent of the actual invention of the patentees." Sey- mour etal. V. Osborne et al., 3 Pish. P. C. 555. —Hall, 1869. 54. " An inventor must be taken to know of what his invention consists, and his patent does not secure to him the exclusive right to any- thing more than he claims to have invented. ' If his specification is imperfect, through mistake or inadvertence, the law enables him, to ob- tain a reissue so as to conform to the truth in this respect." Rich v. Close, 8 Blatch. 41. — Wood- ruff, 1870. 55. " In the construction of a claim, reference is to be had to the descriptive portion of the specification, or to any other portion of it, to as- certain the true Interpretation of the claim. But where the claim is such as to leave no room for construction, where it is clear and explicit, and especially where there is nothing in the specifica- tion which shows that the patentee did not mean just what the plain language of the claim im- ports, we are not aided by and have no need of aid from such specification." — lb. 56. The claim of the patent in suit was for : " An apparatus for recovering gold and silver, substantially as herein specified." As the vessel might be of suitable form, and as the discovery of suitable precipitating ingredients was not in- vention, it was held that the claim was altogether too vague and general, and was invalid. Shaw & Wilcox Co. V. Lovejby, 7 Blatch. 332. — Blatch- FORD, 1870. 57. The claim in complainants' patent was : "1. The application of means to the instrument by which the air may be agitated to produce a tremulous note, substantially as described." Thereof the court said : ' ' There is no ground for the position that the first claim of the patent is void, as claiming to patent a principle. It is a claim to the described means of agitating the air." Hitchcock et al. v. Iremaine et al., 8 Blatch. 440.— Blatch. 1871. 58. " Section 9 of the act of March 3d, 1837, ... is designed to allow a patentee to recover on one claim of his patent, notwithstanding other claims in it are void for want of novelty. But it requires that the parts claimed without right, and the parts rightfully claimed, shall be definitely distinguishable, as matter of fact, on the face of the claims — that is, be definitely dis- tinguished from each other in the claims." Rumford Chemical Works v. Lauer (also Heck- er), 10 Blatch. 123.— Blatch. 1873. 59. ' ' Claiming the arrangement of a combina- tion, when the arrangement is such as to produce a given mechanical result of the combination, is ndt a claim to a function. The result is not claimed irrespective of the means of producing it. The means alone are claimed, and claimed only when specially arranged to produce a given result. This is very far from claiming a func- 54 CLAIM. tion." B^nwiek et all. v. Pond, 10 Blatch, 39. — ■Blatchford, 1873. 00. In complainant's patent for horse-rake the claim was : " ' The arrangement of the rake- head ^«nd treadles HJ and O K, or either, in relation to each other and the axle B, substan- tially as and for the purposes set forth.' " It was held by the court that the patentee might not be able to thus claim an alternative combina- tion, if the separate combinations would not make an operative machine ; but if either or both would, then he might so claim. Brown V. WMttemore et al., 5 Pish. P. C. 524.— Lowell, 1873. 61. Although a patentee's invention may be broader than his claim, still the matters not claimed are public property. Marts et al. V. Ford, G Fish. P. C. 587.— Blodgett, 1873. 63. "In order to ascertain what it is that is patented, we look to the claim. " Browne. Hink- leyet al., 6 Pish. P. C. 370.— Longybak, 1873. 63. " Where a specification by ambiguity and a needless multiplication of nebulous claims is cal- culated to deceive and mislead the public, the patent is void." Carlton v. Bokee, 17 Wall. 463. —Sup. Ct. 1873. 64. " One void claim . . . does not vitiate the entire patent, if made by mistake or inad- vertence and without any wilful default or intent to defraud or mislead the public."— JS. 65. " Usually the claim contains the words ' as described ' or ' substantially as described, ' or words of like import, which are everywhere understood as referring back to the descriptive parts of the specification. Words of such im- port, if not expressed in the claim, must be im- plied." Mitcliell V. Tilghman, 19 Wall. 387.— Sup. Ct. 1873. 66. "A patentee who has invented a new process in the arts, whereby an article of manu- facture is produced new in kind and not before known, may separately claim and patent both the art and the manufacture. He cannot prop- erly combine them in one claim. Differing in that respect from the English law, which allows a patent for ' any manner of new manufactures ' [a term which includes process and product], our law distinguishes between a patent for an art and a patent for a manufacture." Merrill V. Teomans et al., 1 Holmes, 331.— Shepley, 1874. 67. "It is competent ... for a patentee, under the appropriate and fitting conditions ap- pertaining to his invention, to claim broadly the new product, however made, or to claim the new product when made by a described proc- ess. " — lb. 68. " The separate claims of a patent must be construed in reference to the specifications ; and if the specifications point out the arrangements to be made or the methods to be adopted in con- nection with other instrumentalities which the inventor may not claim as new, in order to ren- der his invention practically useful, the test to be applied is not whether the claim alone will pro- duce a useful result, but whether it will do so supplemented by and in connection with such designated devices and instrumentalities." Welles v. Jacques et ail. , 1 Bann & Ard. 60. — McKenhan & Nixon, 1874. 69. " Every skilful mechanic must be able to' learn, from the patent itself, precisely what the monopoly covers." Goulds Mfg Go. v. Gowing et al., 13 Blatch. 343.— Hunt, 1874. 70. "A claim for an effect or a function, in the abstract, is not patentable. The mode and machinery by which the effect is produced must be set forth. The party cannot, for example, sustain a patent for determining the depth of the cut of cutting teeth, in the abstract, or by any and all means that may be suggested." Wheeler et al. v. Simpson et al., 1 Bann. & Ard. 430.— Hunt, 1874. 71. The claim of a patent need not necessarily specif y parts enough to produce a specific result. The claim may properly be confined to the in- vention. Boomer et al. v. United Power Press Co. et al, 13 Blatch. 107.— Shipman, 1875. 73. "It is a well-settled principle that a pat- entee may so limit his claim as to deprive him- self of the full benefit of his invention or discov- ery. It was to remedy such a difficulty or omission that the privilege of surrender and re- issue was granted in the patent laws. Patentees often fail to realize any substantial advantage from some of the most useful inventions, owing to their too narrow claims, until such surrender, amendment, and reissue have been made." Welling v. Rubber- Coated Harness dimming Co., 3 Bann. & Ard. 1.— Nixon, 1875. 73. "When the patentee gets all that he has invented or discovered in one claim, it is better that he should not be permitted to set up and embarrass the public with another claim which gives no additional security or protection to his invention." Putnam v. Terrington, 3 Bann. & Ard. 337.— Nixon, 1876. ' 74. "Patents for a machine will not be sus- tained if the claim is for a result, the established rule being that the invention, if any, within the meaning of the patent act, consists in the means or apparatus by which the result is obtained, and not merely in the mode of operation, inde- pendent of the mechanical devices employed ; CLAIM. 55 nor will a patent be held valid for a principle or for an idea, or any other mere abstraction." Fuller etal. v. Yentzer et al., 94 U. S. 288. —Sup. Or. 1876. 75. "A distinct and formal claim is ... of primary importance in the effort to ascertain precisely what it is that is patented." Merrill V. Teomans et al., 94 U. S. 368.— Sup. Ct. 1876. 76. " The genius of the inventor constantly making improvements in existing patents, a proc- ess which gives to the patent system its great- est value, should not be restrained by vague and indefinite descriptions of claims in existing pat- ents from the salutary and necessary right of improving on that which has already been in- vented." — lb. 77. Claims for different combinations are prop- er in the same patent. Rice v. Heald, 13 Pac. Law Rep. 33. — Sawyeb, 1877. 78. " Inventions sometimes embrace an entire machine, and in such cases it is sufficient if it appears that the claim is coextensive with the patented improvement. Other inventions em- brace only one or more parts of a machine, and in such cases the part or parts claimed must be specified and pointed out, &o that constructors, other inventors, and the public may know what the invention is and what is withdrawn from general use." Parks et al. v. Booth, 103 U. S. 96.— Sup. Ct. 1880. 79. The claim in suit was to " an automatically feeding furnace, in which the ore is carried by the superincumbent weight to be acted upon by the heat, substantially as described. ' ' The court said : " This last claim cannot be sustained. There is no automatically feeding furnace in the case. The furnace described is fed by hand. . . The claim does not correspond with or cover the specifications, and in such cases the patentees are confined to what is expressed in their claim. ' ' Ktwx et al. v. Quickdlver Mining Co., 4 Fed. Rep. 809.— Field, 1880. 80. It seems that a statement in the specifica- tion that a part— which forms an element of a claimed combination— is new is a sufficient notice of claim to such a part of itself. Bowell et al. V. Lindsay et al., 10 Bissell, 317. — Dyer, 1881. 81. " As the United States Supreme Court has held divisional patents valid, tliere can be no legal objection to subdividing the invention into distinct claims." Brown v. Deere et al., 3 Mc- Crary, 433.— Treat, 1881. 83. In a patent for a horse-rake there was claimed the " arrangement of the rake-head E, and the foot-treadles H J and & K, on either, in relation to each other and the axle B, sub- stantially," etc. The claim was held void for ambiguity. Edgarton et al. v. Furst & Bradley M'fg Co. et al., 10 Bissell, 403. — BLODSETTy 1881. 83. A combination claim must embrace parts operative to produce a useful result. — lb. 84. A claim of the patent in suit was : " In combination with the separator, I claim the vats arranged substantially as described and the method herein described of manufacturing starch." Held, to be a "double claim for the combination of the machinery and also for the process." N. Y. Orape Sugar Co. -v. Buffalo Ch-ape Sugar Co. et al., 31 Blatch. 519.— Ship- man, 1883. 85. For an example of a claim for a product defined by reference to the process by which it was produced, see — . Olobe Nail Co. v. U. 8. Horse Nail Co., 19 Fed. Rep. 819.— Nelson, 1884. 86. By the court : "In drawing the claims of a combination patent we do not understand it to be necessary to include any elements except such as are essential to the peculiar combination, and are affected by the invention." Hancock In- spiratm- Co. v. Jenks, 31 Fed. Rep. 911. — Brown, 1884. 87. It was urged against a claim that it did not set forth an operative device, but the parts were so well referred to in the specification as to be understood, and the claim was held sufficient. Jenkins et al. v. Ourney, 33 Fed. Rep. 898. — Colt, 1885. 88. Complainants' patented machine was for unhairing and scouring hides and skins. The bed of the table was omitted from the claimed combination. Defendants contended that such bed formed an actual part of the combination, and because not mentioned in tlie claimed com- bination, that claim therefore covered a mere ag- gregation. Defendants' contention was over- ruled. McDonald v. Whitney et al. , 34 Fed. Rep. 600.— Colt, 1885. 89. " Each claim is, in effect, a separate and distinct patent ; and the right to use one patent does not carry with it the riglit to use the others without a further license." United Nickel Co. V. California Electrical Works, 85 Fed. Rep. 475. —Sawyer, 1885. 90. The claim in issue was : "3. The arrange- ment and combination of a rotating pouncing cylinder, with a vertical supporting horn, sub- stantially as described, whereby the supporting horn may be used to support the tips, side crown, or brim during the operation of pounc- ing the hat." Defendants contended that this claim was indefinite and nebulous ; the court 56 COMBINATION— IN GBNEEAL. sustainedjjl;, saying : "A claim for the combina- tion of parts wliicli perform a distinct function i? good." Nat'l Hat Pouncing Mach. Co. V. TUm et al., 25 Fed. Rep. 496.— Com, 1885. 91. " One seeking a monopoly, which for sev- enteen years is to levy a tax upon the whole country, for the use of a device which may oc- cur to many others at many times during the life of the monopoly, but who are forbidden to use their invention because a patentee has out- stripped them, may surely be required to use plain terms, that plain people may be able to un- derstand, explaining what is claimed to have been invented." Schilli'nger v. Cranford, 37 O. G. 1349.— Hagnbr, 1885. 92. It is to be doubted whether a claim can be treated as part of the description required by law. Smith et al. v. Murray etal., 37 Fed. Rep. 6J.— Blodgett, 1886. 93. It was urged by defendants that the claim of complainant's patent did not reach to the final result. The final result of both complainant's and defendants' machines was the same. The ])oint contended for by defendants was held im- material. Hoe et al. v. Kna/ppet al., 27 Fed. Rep. 304.— Blodgett, 1886. 94. ' ' Each claim of a patent that covers a complete invention is in substance an indepen- dent patent." Celluloid M'fg Co. v. Zylonite Brush & Comb Co. et al., 27 Fed. Rep. 291.— Wallace, 1886. 95. "There is no arbitrary and formal divi- sion of the application into different sections re- quired by law that demands that language nat- urally indicative of the inventor's claim and in- tention shall be excluded from consideration as a part of the claim under the statute, simply because it is not found in a particular part of the application, or because it does not follow the words ' I claim ; ' nor is it necessary to use the word 'claim.' " Im Hue v. Western Electric Light Co., 28 Fed. Rep. 85.— Brown, 1886. 96. " Whether the two patents cover the same thing must be determined by the scope of the claim in the later patent rather than by the de- scription in flie specification. " Adam^-^. Bell- aire Stamping Co. et al., 36 O. G. 567. — Jack- son, 1886. 97. In a machine for Tolling saw-logs the claim was : " In a log- turning device, the spike bar F, having spikes F' in combination with the piston-rod D" and the piston-head D'", of a steam cylinder. A, constructed and operating substantially as and for the purpose described. ' ' The machine would not operate without a cer- tain rear pressure roll, and the court said that the claim did not describe patentable subject-matter. Torrant v. JHluth iMmber Co., 30 Fed. Rep. 830.— Nelson, 1887. COMBINATION-IN GENERAL. Cases. 1. When a patent is for a combination of ma- chines, it is not an infringement to use one of the machines. Evans v. Eaton, 1 Peters' C. C. 323. —Wash. 1816. 2. A patent for an improvement in the art of making nails by means of a machine which cuts and heads the nail at one operation is not a pat- ent for an abstract principle, nor for the different parts of the machine, but for a combination of the various mechanical powers. Cray et al. V. Jam^s et al., 1 Peters' C. C. 394.— Wash. 1817. 3. The separate parts of a claimed combina- tion may be used without infringement. — /J. 4. k. combination may be composed of old and new machines. — Barrett et al. v. Hall et al., 1 Mason, 447.— Stoht, 1818. 5. A combination is not infringed by using parts only of the combination. —7 J. 6. Where the patent is for a combination only — and the elements of the combination may all be old — the whole combination must be used to amount to infringement. Moody v. Fisk^ et al. , 2 Mason, 113.— Story, 1830. 7. "If old materials and old principles in mechanics, or otherwise, are used in a state of combination so as to produce a new result," the product is a patentable invention. Pemwek et al. V. Dialogue, 4 Wash. 538.— Wash- 1835- 8. "A patent for a combination of A, B, and C cannot be technically or legally at once a combination of A, B, and C, and of A and B alone." Prouty et 'al. v. Draper et al., 1 Story, 568. -Story, 1841. 9. " A combination claim is not infringed by a use of less than the whole thereof. ' ' Howe V. Abbott, 3 Story, 190.— Story, 1843. 10. " If the combination was new, it is a pat- entable matter, although a part of the apparatus might have been applied to similar purposes in other and different machines. Under such cir- cumstances it would not be a mere application of an old apparatus to a new purpose, but a new combination of machinery incorporating, in part, old apparatus for a new purpose." Pitts V. Whitman, 2 Story, 609.- Story, 1843. 11. Where the patented thing is a combination the defendants may, without infringement, use any of the combination less than the whole. COMBINATION— IN GENERAL. 57 Brooks et al. v. Jenkim et al., 3 McLean, 433.— McLean, 1844. 13. " The same parts must be used in the same combination to make the defendants liable." Brooks etal. v. Bicknell et al., 4 McLean, 70.— McLean, 1845. 13. " "Wliere the patent is for a new combina- tion and not for the newly invented parts, a violation must extend to the whole." Wilton V. The Railroads, 1 Wallace, Jr., 193.— Sop. Ct. 1847. 14. "It is a well-established principle that when the invention consists of a combination of known mechanical powers, the use of a part less than the whole combination would be no in- fringement. Each one of the different powers combined constitutes a part of the whole, but the invention is not in any of the parts, but in the combination of them. The parts of which the combination consists remain unrestrained from general use, as before the invention." Parker V. Haworth, 4 McLean, 370. — McLean, 1848. 15. " If the patentee borrowed the idea of the different parts which go to constitute his wheel, and for the first time brought them together into one whole, and that whole is materially different from any whole that existed before, then he is the original and first inventor, and is entitled to a patent therefor. ' ' Many v. Bizer et al. , 1 Fish. P. C. 17.— Spkaque, 1849. 16. If defendant omits a material part of com- plainant's patented combination, he does not in- fringe. — lb. 17. " In a patent for a combination, where the novelty of the invention consists in the combina- tion, it is altogether immaterial whether the ele- ments forming the combination are new or old. All may be old ; but if they are brought to- gether in a combination which was never before known, and practically produce a new and use- ful result, it is a patentable subject." Bucket al. V. Eermance, 1 Blatch. 398. — Nelson, 1849. 18. The entirety of a combination must be used in order to infringe. Foote v. Silsby et al., 1 Blatch. 445.— Nelson, 1849. 19. To infringe a combination patent, all the parts of the combination must be used, " con- structed and operating substantially in the same way." Yet no mere change in form or propor- tion, or substitution of mechanical equivalents, will avail a defendant anything. Nor do addi- tions and improvements, though meritorious, give the defendant any right to use the plaintiff's patented improvement. Oorham v. Mixter, 1 Am. L. J. (N. S.) 539.— Sprasub, 1849. 30. " When the application is for a patent for a combination of machinery and materials, form and structure become substance." Bain v. Morse, 6 West L. J. 373.— Cbanch, 1849. 31. " The new combination, v/hen a patent is for that, is not violated when only parts of it are used by others, and not all of them which are material." Smith v. Downing et al., 1 Pish. P. C. 64.— Woodbury, 1850. 33. " In order to violate a new combination, all the material parts of it must be used, or that is not used which the patentee claimed as neces- sary to constitute his new improvement. "—J6. 33. If a certain part is new, the union thereof with another part makes the combination neces- sarily new. JIallv. Mte, 2 Blatch. 197. — Nel- son, 1851. 34. A defendant does not avoid an infringe- ment of a combination by leaving out one ele- ment and substituting therefor something else which performs its ofiice. Brooks et al. v. Nm'- cross et al., 3 Fish. P. C. 661.— Woodbury, 1851. 35. " If a combination has . . . three differ- ent known parts, and the result is proposed to be accomplished by the union of all the parts, arranged with reference to each other, the use of two of these parts only, combined with a third which is substantially different in the manner of its arrangement and connection with the others, is not the same combination, and no infringe- ment." Brooks et al. v. Makeet al,, 15 Howard, 213.- Sup. Ct. 1853. 26. " The word ' machine ' in the statute in- cludes new combinations as well as new organi- zations of mechanism, and hence there may be patents for new combinations of machinery to produce certain effects, whether the machines constituting the combination be new or old." Wintermute v. Eedington, 1 Fish. P. C. 239.^ WiLLSON, 1856. 37. A claim for a combination of devices ' ' will include all combinations of these devices, to effect the same purpose, which are substantially the same, or, in other words, are mere colorable changes of some of the parts." Sickles et al. V. Gloucester Mfg Co., 3 Wall. Jr. 196.— Gribr, 1856. 38. " The law secures to the patentees the right to the use of their machine, provided it consists of a new combination, although com- posed of parts well known and in common use." Carr v. Rice, 1 Fish. P. C. 198.— Betts, 1856. 39. " In a patent for a combination there can be no infringement unless all the material parts entering into the combination are used. You may use the parts, provided you do not use the combination." Foss et al. v. Herbert, 1 Bissell, 131. — Dkummond, 1856. 30, " The most valuable inventions consist in 58 COMBINATION- IN GENERAL. the combination of known mechanical powers. Every part of such invention may he found in some form among the various devices of human Ingenuity, and the man who unites these powers and produces a new and important result to so- ciety is well denominated a public benefactor. It is not the man who may form an imperfect machine which may suggest to a higher and more practical order of mind valuable ideas, but it is the one who embodies those ideas in a practical and working form whom the law pro- tects." Pitts V. Edmonds etal., 1 Bissell, U. S. C, 168.— McLean, 1857. 31. "To make a valid claim for a combina- tion, it is not necessary that the several element- ary parts of the combination should act simul- taneously. If those elementary parts are so arranged that the successive action of each con- tributes to produce some one practical result, which result, when attained, is the product of the simultaneous or successive action of all the elementary parts, viewed as one entire whole, a valid claim for thus combining those elementary parts may be made." Purbush et al. v. Gook et al., 10 Mo. L. R. 664.— CuKTis, 1857. 33. ' ' Nor is it requisite to include in the claim for a combination, as elements thereof, all parts of the machine which are necessary to its action, save as they may be understood as entering into the mode of combining and arranging the ele- ments of the combination." — lb. 33. The parts of a combination "may all be' such as never existed before in such a combina- tion, and yet the combination may not be new, in the sense of the patent law. To be new in that sense, some new mode of operation must be in- troduced. And it is decisive evidence, though not the only evidence, that a new mode of opera- tion has been introduced, if the practical effect of the new combination is either a new efEect or a materially better effect, or as good an effect more economically attained by means of the change made in the combination of the patentee. A new or improved, or more economical effect, attributable to the change tnade by the patentee in the mode of operation of existing machinery, proves that the change has introduced a new mode of operation, which is the subject-matter of a patent ; and when this is ascertained, it is not a legitimate subject of inquiry at what cost to the patentee it was made, nor does the valid- ity of the patent depend on an opinion formed after the event respecting the ease or difficulty of attaining it. ' — lb. 34. Although three elements of a patented combination may all be old, and two of them have been combined before, yet he who brings into the combination the third element, and thereby gets a practical advantage, makes a pat- entable invention. — lb. 35. " It would be no defence in an action for the infringement of a combination to show that the separate elements are old ; the proof must go to the novelty of the whole combination as a unit." Latta-7. Bha/wk, 1 Bond, 359. — Lbavitt, 1859. 36. Where a combination is of old and new parts of a machine, the defendant infringes if he takes the new part only. — lb. 37. Defendant cannot evade plaintiff's patent for a combination by not using a part proved not to be material to the successful working of the plaintiff's combination. — lb. 38. There are two classes of combinations known to-the patent law : one in which all the elements are old, and another in which some of the elements are new. In the former case all the elements must be used to constitute infringe- ment, but in the latter case the patent is infringed if only the new elements are used. Lee et al. V. Blaridy et al., 1 Bond, 361.— Leavitt, 1860. 39. A combination is a " union of parts co-op- erating to produce one result. ' ' Howe v. Mor- ton etal., 13 M. L. R. 70.— Spkagub, 1860. 40. " There may be sub-combinations entering into the general combination." — lb. 41. Said by the court of a sewing-machine pat- ent : "It is familiar law that a new arrange- ment, a new combination, may constitute a new invention. If not only all the primary elements, but all the sub-combinations, had existed in different machines before, but never before had been brought together to constitute one machine, and co-operating to produce one result, and Howe had brought them together by invention, producing a useful result, he would be entitled to a patent for such combination and arrange- ment. "—J6. 42. Where a patent is for a combination, a party using the same cannot prove that a part of the combination is useless, and therefore need not be considered. Yance v. Campbell et al., 1 Black, 437.- Sup. Ct. 1861. 43. " In order to constitute an infringement of a combination, the whole combination must be used." Case v. Broken, 1 Biss. 383. — Dbum- MOND, 1863. 44. ' ' The principle is undoubted, that in a patent for a mechanical structure, the novelty and utility of which consists wholly In a com- bination of things before known and in use, there is no infringement by the use of any of the separate parts of the combination." Tilgliman V. Werh, 1 Bond, 511.— Lbavitt, 1863. COMBINATION— IN GENEEAL. 59 45. Whefe a patent is for a combination of mechanical powers to effect a useful result, it differs essentially from one where the subject- matter is new. Eames v. Godfrey, 1 "Wallace, 78.— Sup. Ct. 1863. 46. " There is no infringement of a patent which claims mechanical powers in combina- tion, unless all the parts have been substantially iised. The use of a part less than the whole is no infringement. " — Ih. 47. As regards a patent for a combination, if the defendant uses all the parts but one, and for that substitutes another mechanical structure, different in its construction and operation, but serving the same purpose, he is not an infringer. —lb. 48. Where a patent is for a combination, in order to infringe it there must be a use of the same methods substantially as those adopted by the patentee. Case v. Brown, 2 Wallace, 330. — Sup. Ct. 1864. 49. " The patentee of a machine which con- sists merely of ... a combination cannot pre- vent the use of any number of those parts less than the whole, or of new and substantial im- provements of those old parts themselves, but only his own combination of parts, or known substitutes therefor." Hale et al. v. Stimpson et al., 2 Fish. P. C. 565.— Lowell, 1865. 50. ' ' Where all the elements of a machine are old, and the invention consists solely in the com- bination, by which a new and useful result is effected, as compared with the old machine, on which the improvement is made, no one can be held as an infringer who does not use all the elements of the new combination. " " The prop- erty of the first inventor consists in the new combination he has made, and to that and its result he is fully and fairly entitled ; but he can- not invoke the doctrine of equivalents to suppress any other improvement which does not embrace his improvement, and which is substantially different. Formal differences or colorable eva- sions, however, are not suflScient to confer any right as against the first patent, but the patentee and all those claiming under him will treat all such as culpable infringements." BobertSY. Ham- den, 3 Clifford, 500.— Clifford, 1865. 51. "In considering whether one element of a combination is substantially the same as the element of another combination, the fact that one works better than the other, coupled with the fact that the change is not within the knowl- edge and skill of all mechanics, is highly impor- tant and often decisive." Woodman v. Btimpson, 8 Fish. P. C. 98.— LowBLL, 1866. 53. "A combination in mechanism must con- sist of distinct mechanical parts, having some re- lation to each other, and each having some func- tion in the organism." Yale & Ch-eerdeaf Mfg Co. et al. V. North, 5 Blatch. 455.— Shipman, 1867. 53. "A person obtains a patent for a machine containing three different elements in combina- tion. Those three, elements separately are none of them new, but the patentee, by his ingenuity and study, has contrived to combine them so as to produce a new and useful result, and that is a patentable subject under our patent laws." Blancliard et al. v. Puttman et al., 3 Bond, 85. — Lbavitt, 1867. 54. All the parts of a combination " must co- act in producing the results claimed for the com- bination. " Swift et al. v. Whisen et al., 2 Bond, 115— Lbavitt, 1867. 55. " Where a patent is obtained as one com- bination of a number of parts which in them- selves are not new, there is no infringement, in the eye of the law, of the right secured by such a patent unless the entire combination is used. if the alleged infringer uses less than all the combination and nothing else, he is not liable. If he uses less than all and substitutes something for the part omitted different from that which he omits, and which answers the same purpose, unless the substitute be a mere mechanical equiv- alent used for the combination, then, ... ac- cording to the rule of law as well established on the subject, there is no liability." Bensmore et al. V. ScJwfield et al., 4 Fish. P. C. 148.— SWAYNB, 1868. 56. " Undoubtedly there may be separate com- binations, and each separate combination may or may not all be covered by the same patent, as there may be separate and several things in the combination all covered by the same patent. When there is a combina|;ion complete in itself, more or less extensive, it is in the eye of the law, so far as its patentability is concerned, as much an identity and separate thing as if it were not a combination, but a single thing independent and complete in itself, and having no element of combination in it. " — I b. 57. "A patent for a combination of two things is not, of course, a patent for a combination of one of the two with a third and different thing. " Nicholson Pa/oement Co. v. Hatch et al. , 4 Saw- yer, 693.— Field, 1868. 58. " It is a familiar and undoubted principle of law . . . that in a patent for the combination of three well-known things, the making and use of two only of them is no violation or infringe- ment of the patent." Haseldon v. Ogden, 3 Fish. P. C. 378.— Shekman, 1868, 60 COMBINATION— IN GENEEAL. 59. " Infringement depends not so muoli on the form of the particular device in question, or upon the name given to it in the specification by the construction, as upon tlie functions it performs, and it is well-settled law that if one device is employed in a similar combination to another, and performs the same function in the same way, the two are substantially the same, although they may be different in form, and may be known among mechanics by different names. ' ' Oraliam et al. v. Mason, 4 Clifford, 88. — CLroFORD, 1869. 60. " Technical equivalents do not belong to a mere combination of old elements. Such a combination is regarded merely as an improve- ment upon what was before known, and which, without such new combination, would have be- longed to the public. Inventors of such im- provements, if their rights are secured by letters- patent, may treat all others as infringers who make, use, or vend to others to be used, any and every subsequent combination of those elements not substantially different merely because the person constructing the machine under it em- ploys a different device for one of the elements, provided such device was, at the date of the first patent, a well-known substitute for the omitted element." Sands v. Wardell et al., 3 Clifford, 277.— Clifford & Clakk, 1869. 61. "What is specified as an element of a com- bination claim cannot be rejected as surplusage. —n. 63. "Where a combination is made up of old elements, " the doctrine of mechanical equivalents does not apply." Crampton v. Belknap Mills et al., 3 Fish. P. C. 586.— Clark, 1869. 63. " The patentee of a combination cannot treat another as infringer who has improved the original machine by the use of a substantially different combination, though it produces the same result. " — lb. 64. "Where the claim of a patent is for a com- bination, the presumption is that the elements separately considered are old. Rich v. Close, 8 Blatch. 41.— "Woodruff, 1870. 65. In the claim of complainant's patent for improvement in water-wheels, the combination included as one element a certain ' ' tube F. " Plaintiff desired to show that this tube was im- material. Plaintiff was not permitted to show this, and as defendant's device did not have this tube, defendant was held not to infringe. — lb. 66. " Although a combination of old devices may be patentable when a new and useful result is produced, no one can, by combining several de- vices, each of which is old, thereby deprive others of the right to use them separately, or of the.right to use them in new combinations, or of the' right to u.se some of them in combination, omitting others." Hailes et al. v. Van Warmer et al., 7 Blatchford, 448.— "Woodrupf, 1870. 67. " If the combination of . . . old devices be supplemented by other and new devices co- operating therewith, and thereby a new and use- ful result is produced not attained by the action of the old devices, there also is invention." — lb. 68. " Actual inventors of a combination of two or more ingredients in a machine, secured by letters-patent in due form, are entitled, even though the ingredients are old, if the combina- tion produces a new and useful result, to treat every one as an infringer who makes or uses or vends the machine to others to be used without their authority or license. . . . " They cannot suppress subsequent improve- ments which are substantially different, whether the new improvement consists in a new combi- nation of the same ingredients, or of the substi- tution of some newly -discovered ingredient, or of some old one, performing some new function not known at the date of the letters-patent, as a proper substitute for the ingredients withdrawn from the combination constituting their inven- tion. Mere formal alterations in a combination in letters-patent, however, are no defence to the charge of infringement, and the withdrawal of one ingredient from the same, and the substitu- tion of another which was well known at the date of the patent as a proper substitute for the one withdrawn, is a mere formal alteration of the combination if the ingredient substituted per- forms substantially the same function as the one withdrawn. " Patentees, therefore, are entitled in all cases to invoke to some extent the doctrine of equiva- lents, but they are never entitled to do so in any case to suppress all other substantial improve- ments, and the rule which disallows such pre- tensions, if properly understood and limited, is as applicable to the inventor of a device, or even of an entire machine, as to the inventor of a mere combination, except that the inventor of the latter cannot treat any one as an infringer whose machine does not contain all of the ma- terial ingredients of the prior combination, as in that state of the case the subsequent invention is regarded as substantially different from the former one, unless the latter machine employs as a substitute for the ingredient left out to perform the same function some other ingredient which was well known as a proper substitute for the same when the former invention was patent- ed. .. . " BoTux, fide inventors of a combination are as COMBINATION— IN GENBEAL. 61 much entitled to suppress every other combina- tion of the same ingredients to produce the same result, not substantially different from what they have invented and caused to be patented, as any other class of inventors. All alike have the right to suppress every colorable invasion of that ■which is secured to them by their letters-patent. ' ' Seymour v. Oaborn, 11 "Wall. 516. — Sup. Ct. 1870. 69. " Inventors of a combination are as much entitled to suppress every other combination of the same ingredients, to produce the same result, not substantially different from what they have invented and caused to be patented, as any other class of inventors, and they have the right to in- voke the doctrine of equivalents to that extent to sustain their invention." Sayles vr Chicago & N. W. R. R. Co., 3 Bissell, 53.— Drummond, 1871. 70. " If a patentee hsis invented a combination of two or more old things so as to produce a new and useful result, then he has a right to treat as infringers all who have used his invention in order to accomplish something more or better, when, without the aid of such invention, it could not be effected." — lb. 71 . "A combination, all the elements of which are old is patentable, if a new or improved re- sult is thereby obtained ; . . . a combination, all the elements of which, except a single one, have been before used together, is also the subject of a patent. The whole combination is to be re- garded as a unit, and if all its essential elements have not before been embodied and employed together, it is to be taken as an original inven- tion." Watson et al. v. Cunnijigham et al., 4 Fish. P. C. 538. -MoKbnnan, 1871. 73. "A combination to be valid must have the attribute of practical utility, but this is not to be determined by a reference to the abstract practicability of the elements claimed to com- pose it. Resort must be had to the whole speci- fication, and if it is therein properly described, its relation to co-operative mechanism indicated and explained, and the method of its use in con- nection therewith directed, and, when so used, is practically operative, it is a good combination, and will support a restricted claim for it." Parham v. American B. 0. & 8ewing Machine Co. et al., 1 Pa. Leg. G. Rep. 145.— McKbnnait, 1871. 73. Where the patent in suit is for a combina- tion, and the device substituted for one of the elements " is not a device known in mechanics, for accomplishing similar results in machinery, and would require the discovery of something new, the invention of something not before known, nor before used in machinery for any similar or analogous purpose, then its contriv- ance and application to the purpose indicated is not the mere substitution of a known mechani- cal substitute, and is not an infringement." Carter et al. v. Baker et al., 1 Sawyer, 513. — Sawyer, 1871. 74. The patent in question was for a lamp- burner, and the combination claimed included the chimney, which defendants did not make. Defendants were held to infringe. Wallace et al. V. Holmes et al., 9 Blatch. 65. — "Woodrtjpf, 1871. 75. " Where a patent is granted for a mere combination of old devices to produce a new re- sult, such a patent is not infringed by one who produces the same result without using all the devices which are included in the combination patent." Waterbury Brass Co. v. E. Miller <6 Co., 9 Blatch. 77.— Woodruff, 1871. 76. " All machines are in a certain sense com- binations, but it is not true of machines, as such, that, because every one of its members performs in it the identical office which it would perform howsoever used, the conjoint action in their new combination may not produce a result new and useful, and never before attained. ' ' Qallahue et al. V. Butterfield, 10 Blatch. 333.- Woodruff, 1873. 77. " Patentable inventions may consist en- tirely in a new combination of old ingredients whereby a new and useful result is obtained, and in such cases the description of the invention is suflacient if the ingredients are named, the mode of operation given, and the new and useful re- sult is pointed out, so that those skilled in the art, and the public, may know the nature and extent of the claim and what the parts are which co-operate to produce the described new and useful result." Gould y. Rees, 15 Wall. 187.— Sup. Ct. 1873. 78. "Mere formal alterations of a combina- tion in letters-patent do not constitute any de- fence to the charge of infringement, as the in- ventor of a combination is as much entitled to suppress any other combination of the same in- gredients to produce the same result, not sub- stantially diEEerent from what he has invented and caused to be patented, as the inventor of any other patented improvement. Such inventors may claim equivalents as well as any other class of inventors, and they have the same right to suppress every other subsequent improvement, not substantially different from what they have invented and secured by letters-patent, but they cannot suppress subsequent improvements which are substantially different from their inventions, COMBINATION— IN QENEEAL. whether the new improvement consists in a new combination of the same ingredients or of some newly-discovered ingredient, or even of some old ingredient performing some new function, not liuown at the date of the letters-patent, as a proper substitute for the ingredient withdrawn. ' ' —Ih. 79. " Unquestionably, the withdrawal of one Ingredient in a patented combination and the substitution of another which was well known at the date of the patent as a proper substitute for the one withdrawn, is a mere formal altera- tion of the combination ; and if thp ingredient substituted performs substantially the same func- tion as the one withdrawn, it would be correct to instruct the jury that such a substitution of one ingredient for another would not avoid the charge of infringement. "■ — lb. ' 80. " If the ingredient substituted for the one withdrawn was a newly-discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's pat- ent as a proper substitute for the ingredient withdrawn, it would not be an equivalent for the ingredient withdrawn, it would avoid the infringement, as a new combination or a newly- discovered ingredient substituted for the one omitted, or even an old one performing a new function, not known at the date of the plaintiff's patent as a proper substitute ' for the one with- draiwn, would not be an equivalent for the in- gredient omitted within the meaning of the pat- ent law ; nor could it be successfully claimed as such by the plaintiff in order to support the charge of Infringement. Such an alteration is not a mere formal alteration, as the difference between the two improvements is such that the new combination would be the pi-oper subject for a patent, and consequently would avoid the charge of infringement in a case like the one supposed by the court. ' ' — 1 b. 81. " Sona fide inventors of a combination are as much entitled to equivalents as the inventors of other patentable improvements ; by which is meant, that a patentee, in such a case, may sub- stitute another ingredient for any one of the in- , gredients of his invention, if the ingredient sub- stituted performs the same function as the one omitted, and was well known at the date of his patent as a proper substitute for the one omitted in the patented combination. Apply that rule, and it is clear that an alteration in the patented combination which merely substitutes another old ingredient for one of the ingredients in the patented combination is an infringement of the patent, if the substitute performs the same func- tion and was well known at the date of the pat- ent as a proper substitute for the omitted ingre- dient ; but the rule is otherwise, if the ingredient substituted was a new one, or performs a sub- stantially different function, or was not known at the date of the plaintiff's patent as a proper substitute for the one omitted from his patented combination. ' ' — lb. 82. " Where the defendant, in constructing his machine, omits bntirely one of the ingredi- ents of the plaintiff's combination without sub- stituting any other, he does not infringe, and if he substitutes another in the place of the one omitted, which is new, or which performs a sub- stantially different function, or if it was old, but was not known at the date of the plaintiff's invention as a proper substitute for the omitted ingredient, then he does not infringe." — lb. 83. "It is not always enough to prove that two combinations of elements are equivalent to show that each element of the combination in one may be regarded, under some circumstances, as the equivalent of the corresponding element in the other, when the elements are separately considered. If the mechanical combination of the members of the two machines be such that the action and mode of operation differ in the two machines, then one is something more than a mere mechanical equivalent for the other." Blake et al. v. Rawson, 1 Holmes, 300. — Shbp- MT, 1872. 84. " Patents may be granted for combina- tions in which some of the parts are old and some are new ; and whatever in the ^several parts is new may be separately secured to the invent- or ; and yet it may be true that only in the com- bination described, or in some similar combina- tion, the new part thus secured to the inventor is of any practical use whatever." Wheeler, Jr., V. Clipper Mower and Beaper Company, 10 Blatch. 181.— WooDRUT-P, 1872. 85. The claim in complainant's patent was : " What I claim, therefore, and desire to secure by letters-patent, is the combination of a lock and latch, when the latch-bolt and its operative mechanism are arranged in a case or frame in- dependent of the main case and constructed so that the latch-bolt may be reversed substantially as described, without removing the said inde- pendent case from the main case. ' ' Thereof the court said : "He might, no doubt, have claimed the improved reversible latch enclosed in any outer case. If that latch in its construction, mode of operation, and arrangement for revers- ing was new and useful, it was patentable, and his patent might have been more comprehensive than it now is. His patent is not to be held in- valid because he only claims it when held in an- COMBINATlOlSr— IN GENERAL. 63 other case, containing also lock mechanism, if, in fact, his improvement was patentable ; not even though there is no relation in the operation of the two, and no effect from the combination which either separately would not produce. Nothing in the cases cited forbids the inventor of a new device from taking a patent under g, claim narrowed as closely as he sees fit, and, however much narrower than he might have claimed, the patent is valid." Russell & Erwin M'fg Go. V. Mallory et al., 10 Blatoh. 140.— Woodruff, 1872. 86. " The rules of law applicable to the sub- ject of combinations are free from difficulty. ... A patent for a combination, where neither part is patented as new, is not infringed by one who uses' one, or some, but not all of tlie parts." Sarmn v. Eall et al., 9 Blatcli. 534. — Wood- ruff, 1872. 87. A combination patent is not infringed by the use of less than all the elements of the com- bination. Oarratt v. Seibert, 7 Pac. Law Kep. 116.— Strong, 1873. 88. " Where a combination is claimed the pat- entee cannot abandon part of said combination and maintain a claim to the residue, nor prove any part thereof immaterial or useless without destroying the whole. For the combination is an entirety, and if one of the elements is given up, the combination disappears. ' ' Westlake v. Cartter et aZ., 6Fish. P. C. 519.— Treat, 1873. 89. " When a party has patented a combina- tion, and that combination turns out to be Use- less, of no practical utility, and another party adds to the combination another element, and thereby makes the whole practically useful where there was no utility before, the party who thus adds another element to the combination which was necessary to make the proper combi- nation of any practical utility is not an infringer, and ... he is not entitled merely to use his improvements, requiring first a license to use the former combination, but ... he may use the whole of it." Bobertaon v. mil, 6 Fish. P. C. 465.— Shbplbt, 1873. 90. " The use of any number of the elements of a patented combination less than the whole, or their equivalents, or what is substantially the same thing, is no infringement." Brown V. Hinkley et al., 6 Fish. P. C. 370. — Longybar, 1873. 91. Infringement of a combination is not avoided by substituting a well-known mechan- ical equivalent therein. King v. Louisville Ce- ment Oo., 6 Fish. P. C. 836.— Ballard, 1873. 93. " No one infringes a patent for a combina- tion who does not employ all the ingredients of I the combination ; but if he employs all the in- ■ gredients, or adopts mere formal alterations, or substitutes for one ingredient another which is well known at the date of the patent as a proper substitute for the one withdrawn, and which performs substantially the same function as the one withdrawn, he does not infringe. " — lb. 93. ' ' The description in the specifications of the operation and effect of each separate element or part of the patented combination must be read and construed with reference to the entire com- bination and its results, and the effect which the operation, that each element or part has upon that of each of the others. ' ' Hamilton v. Ives et al., 6 Fish. P. C. 344.— Longybar, 1873. 94; " A valid combination may consist of old elements which have not been before similarly arranged, or, if they have, . . a novel result is produced by their conjunction. Either the in- strumentalities employed or the effect caused by their operation must be new to constitute a pat- entable combination. If substantially the same devices have been used before for a like pur- pose, or if they are applied merely to effectuate a method known and practised before, such em- ployment of them will not be protected by a pat- ent. ' ' ]Sr. W. Mre E.v. Co. v. Philadelphia Mre Ex. Co., 1 Banning & Arden, 177. — McKbn- NAN, 1874. 95. In a combination " itis not necessary that every function should be performed simultane- ously. Their connection and operation ... in immediate succession is sufficient." Birdsall V. McDonald et al., 1 Banning & Arden, 165. — SwAYNE & Wblker, 1874. 96. The law ' ' protects the inventors of com- binations against the substitutions of equivalents as fully as the inventors of other patentable im- provements. " "In order to avoid the charge of infringement in such cases, the substituted ingredient must be a new one, or must perform a substantially different function, or must be un- known at the date of the plaintiff's patent as a proper substitute for the one omitted from the patented combination." Webster et al.Y. New Brunswick Carpet Co., 1 Banning & Arden, 84. —Nixon, 1874. 97. When " the whole combination, as an en- tirety, is the thing claimed as the invention, and patented, no part, however useless, can be dis- pensed with for the purpose of working out an infringement." Coolidge v. McCone,'ii Sawyer, 571.— Lawyer, 1874. 98. " There must be the use of the entire combination, a combination of all the parts, in order to constitute an infringement." MsTier V. Craig, 3 Sawyer, 69.— Sawyer, 1874. 64 COMBHSTATIOlSr— IN GENERAL. 99. "A patent for a combination is infringed by tlie use of a similar combination, although one of the elements is omitted and another sub- stituted for it, unless the substituted device is a new one, or performs a function essentially different, or was not known at the date of the patent as a proper substitute for the one omit- ted. ' ' Welling v. Rubber Coated Harness Trim- ming Co. et al., 1 Banning & Arden, 383. — Nixon, 1874. 100. ' ' Valid letters-patent may be granted for an invention which consists entirely of a new combination of old ingredients, provided that it appears that the new combination of tlie in- gredients produces a new and useful result ; but the rule is equally well settled in such a case that the invention consists merely in the new combination of the ingredients, and that a suit for an infringement cannot be maintained against a party who constructs or uses a sub- stantially different combination, even though it includes the exact same ingredients. " Alterations, however, in a combination which are merely formal do not constitute a defence to the charge of infringement, as the inventor of a new and useful combination of old ingredients is as much entitled to claim equivalents as any other class of inventors, but they cannot suppress subsequent improvements, which are substan- tially different from their inventions, whether the new improvement consists of a new com- bination of the same ingredients or of some newly-discovered ingredient, or even of some old ingredient performing some new function not known at the date of the letters-patent as a, proper substitute for the ingredient with- drawn. " Old ingredients known at the date of the let- ters-patent granted for an invention, consisting of a new combination of old ingredients, if also known at that date as a proper substitute for one or^more of the ingredients of the invention secured by the letters-patent, are the equivalent of the corresponding ingredients of the patented combination. Such old ingredients, so known at the date of the letters-patent granted, are the equivalents of the ingredients of the patented combination, and no others, and it may be add- ed that that, and that only, is what is meant by the rule that inventors of a new combination of old ingredients are as much entitled to claim equivalents as any other class of inventors." — Gill V. Welles, 23 "Wall. 1.— Sup. Ct. 1874. 101. A patent for a new combination of old parts " is valid and operative, but the rights of the patentee under it differ in some respects from those of a patentee for an invention which consists of an entire machine, or of a new and useful device, as the rights of a patentee for a mere combination of old ingredients are not infringed unless it appears that the alleged in- fringer made or used the entire patented combi- nation. "—/J. 103. " Argument to show that an invention consisting of a combination for three ingredients which are old is not the same as that of a com- bination of four old ingredients, is quite unneces- sary, as the negative of the proposition is as well settled in the patent law as it is in mathe- matics. " "A patentee in suit for an infringe- ment' of an invention consisting of a combination of old ingredients cannot, in his proofs, abandon a part of such a combination and maintain his claim to the rest, for the reason that unless the patented combination is maintained the whole of the invention fails. ' ' The patentee in such a suit cannot be allowed to prove that any part of the combination is im- material or useless. The combination is an en- tirety, and if one of the ingredients be given up the thing claimed disappears, which is an obvi- ous truth, as the invention in such a case con- sists simply in the combination. The clause which provides that the suit shall not be defeated where the patentee claims more than he has in- vented, in case he shall disclaim such part, ap- plies only where the part invented can be clearly distinguished from that improperly claimed, which shows that the clause cannot apply to a patent granted for an invention consisting of a combination of old ingredients. ' ' — lb. 103. By a mechanical equivalent in a case of a combination ' ' is meant that the ingredient substituted for the one withdrawn performs the same function as the other, and that it was well known at the date of the patent se- curing the invention as a proper substitute for the one omitted in the patented combination." — /*. 104. "A party who merely substitutes an- other old ingredient for one of the ingredients of a patented combination is an infringer if the substitute performs the same function as the ingredient for which it was substituted, and was well known at the date of the patent as a proper substitute for the omitted ingredient ; but the rule is otherwise if the ingredient substituted was a new one, and performed substantially a different function, or was not known at the date of the plaintiff's patent as a proper substitute for the one omitted, as in that event he does not infringe." — lb. 105. "It is somewhat difficult, and perhaps impossible, to draw a clear and well-defined line COMBINATION— IN GENBEAL. 65 between what is termed a mere aggregation of devices and what is regarded as a patentable combination." WesUnghouse, Jr., v. Garctner & Hanson Air -Brake Co., 2 Banning & Arden, 55. — SwAYNB & Welkeh, 1875. 106. "Equivalents are allowed in an inven- tion consisting of a combination of old ingredi- ents, as well as in every other class or descrip- tion of inventions. Such an invention consists entirely in the combination, and the rule is that the rights of the patentee under it differ in one respect from those of a patentee of an invention that consists of an entire machine, or of a new and useful device, as the rights of a patentee for a mere combination of old ingredients are not infringed unless it appears that the alleged in- fringer made or used the entire combination. . . . Combinations of the kind include not only the ingredients described in the patent, but equiv- alents also, by which is meant any other ingredi- ents which will perform the same function as the one described, arid which were well known at the date of the patent as proper substitutes for the ones actually described in the patent. ' ' Starrs v. Howe et al., 4 Clifford, 388.— Clif- ford, 1876. 107. "Where the invention consists entirely in a new combination of old elements or ingre- dients, the law is well settled that a suit for in- fringement cannot be maintained unless it ap- pears that the resijondent has used all the ele- ments or ingredients of the new combination." Sanford et al. v. Merrimack Hat Co., 4 Cliff. 407. —Clifford, 1876. 108. "Valid letters-patent undoubtedly may be granted for an invention which consists en- tirely in a new combination of old elements or old ingredients, provided it appears that the new combination of the ingredients produces a new and useful result ; but the rule is equally well settled that the invention in such a case consists merely in the new combination, and that a suit for infringement cannot be maintained against u. party who constructs or uses a substantially different combination, even though it includes the exact same elements or ingredients, if the combination is in fact new and useful, and sub- stantially different from the one which preceded it." Fuller et al. v. Tentzer etal., 94 U. S. 388. —Sup. Ct. 1876. 109. " "Where the claim for the patent is for a combination, it is necessary to understand the meaning of the several devices of which the com- bination is composed. ' ' Oammeyer et al. v. New- ton et al., 94 U. S. 326.— Sup. Ct. 1876. 110. Where the patent in suit is for a com- bination then upon the question of infringe- ment, " though some of the corresponding parts of the machinery designated in this combination ! are not the same in point of form in the two : bolting apparatuses, and, separately considered, ! could not be regarded as identical or conflicting, ; yet having the same purpose in the combination, \ and effecting that purpose in substantially the i same manner, they are the equivalents of each \ other in that regard." Cochrane et al. v. Deener ; etal., 94 U. S. 780.— Sup. Ct. 1876. j 111. " If the combination is used, although j some of its separate parts may be improved, it is an infringement." Converse et al. v. Cannon et al., 3 Woods, 7.— Woods, 1873. 118. A claim for a combination is not in- fringed unless all the parts of the combination are used. £lddy v. Dennis, 95 U. S. 560. — Sup. Ct. 1877. 113. " When the patent is for a peculiar com- bination of old devices the patentee cannot insist upon mechanical equivalents." Tuengling v. Johmon, 1 Hughes, 607. — Hughes, 1877. 114. "Mechanical equivalents cannot be in- sisted upon in inventions which consist in the mere arrangement of old devices. ' ' — Ih. 115. "The invention of a new device is in general patentable without reference to the ob- ject it is designed to accomplish, and is good against any subsequent invention of the same device designed for any other object. . . . This is not necessarily the case where the invention is merely of a combination of old devices. In such inventions the purpose aimed at, tlie/on» of the structure, its portableness or non-portable- ness, whether it is used as a fixture or carried in the hand, are elements which, though any one of them might not determine its character with reference to another invention of a combination of devices, yet all together might unite to constitute it a different instrument." —lb. 116. Combinations of machinery which pro- duce a result by the successive action of the parts, each producing its own results, are patent- able combinations. Herring et al. v. Nelson et al., 14 Blatch. 393.— Johnson, 1877. 117. " A combination is always an entirety. In such cases the patentee cannot abandon a part and claim the rest, nor can he be permitted to prove that a part is useless and therefore imma- terial. He must stand by his claim as he has made it." Schumacher v. Cornell, 96 U. S. 549.— Sup. Ct. 1877. 118. "In the case of a claim for a combina- tion, where all the elements of the invention arc old, and where the invention consists entirely in the new combination of old elements or devices 66 COMBINATION-IlSr GENERAL. whereby a new and useful result is obtained, such combination is sufficiently described if the elements or devices of which it is composed are all named, and their mode of operation giyen, and the new and useful result to be accomplished pointed out, so that those skilled in the art, and the public, may know the extent and the nature of the claims, and what the parts are which co- operate to produce the described new and use- ful result." Bates et al. v. Coe, 98 U. S. 31.— Gup. Ct. 1878. 119. " Where the thing patented is an entire- ty, consisting of a single device or combination of old elements incapable of division or sepa- rate use, the respondent cannot escape the charge of infringement by alleging or proving that a part of the entire thing is found in one prior patent or printed publication or machine, and another part in another prior exhibit, and still another part in a third one, and from three or any greater number of such exhibits draw the conclusion that the patentee is not the original and first inventor of the patented improvement. ' ' — /*. 120. " The patentee or owner of a patent for a combination is as much entitled to equivalents as the patentee or owner of any other class of inventions. Doubts at one time existed as to the correctness of that proposition, but it is now well settled. " American Whip Co. v. Lombard, 4 Clifford, 495.— Clifford, 1878. 121. " If the defendant omits entirely one of the elements or ingredients of the patented com- bination without substituting any other in its place, he does not infringe the plaintiff's patent ; and if he substitutes another in the place of the omitted one, which is new, or which performs a substantially different function, or, even if it is old, was not known at the date of the plaintiff's patent as a proper substitute for the omitted ele- ment or ingredient, then the charge of infringe- ment is not maintained. By an equivalent in such a case, it is meant that the element or in- gredient substituted for the one withdrawn per- forms the same function as the other, and that it was well known at the date of the patent in question as a proper substitute for the one omit- ted in the patented combination. Hence it fol- lows that a party who merely substitutes an- other old element or ingredient for one of the elements or ingredients of a patented combina- tion is an infringer, if the substitute performs the same function as the one omitted, and was well known at the date of the patent as a proper substitute for the element or ingredient employed in the patented combination. " — lb. 133. " Mere formal alterations of a combina- tion in letters-patent do not constitute any de- fence to the charge of infringement, as the in- ventor of such an improvement is as much en- titled to suppress every other combination of the same devices to produce the same result as the inventor of any other patented process or prod- -act."— lb. 133. Though two combinations may have the same parts, yet if in the latter the parts are differ- ently combined, and produce a different result, the latter combination is patentable. Howes et al. V. McNeal, 15 Blatch. 103.— Blatchford, 1878. 124. For example of improvement in the parts of a lamp held to be a patentable combination and not a mere aggregation see — . Williams V. Borne, Watertown and Ogdensburg Railroad Co., 15 Blatch. 200.— Blatchfobd, 1878. ' 125. The patentee of a combination " may doubtless invoke the doctrine of equivalents as against the infringer of a patent, but the term equivalent ' as applied to such an invention, is special in its signification, and somewhat differ- ent from that which is meant when the term is applied to an invention consisting of a new de- vice or an entirely new machine. ' ' Imhaeuser V. Buerh, 101 U. S. 647.— Sup. Ct. 1879. 126. " Patentees of an invention consisting merely of a combination of old ingredients are entitled to equivalents, by which is meant that the patent in respect to each of the respective ingredients comprising the invention covers every other ingredient which, in the same ar- rangement of the parts, will perform the same functions, if it was well known as a proper sub- stitute for the one described in the specification at the date of the patent. " — lb. 127. " Where the thing patented is an en- tirety, consisting of a single device or combina- tion of old elements Incapable of division or separate use, the respondent cannot escape the charge of infringement by alleging or prov- ing that a part of the entire invention is found in one prior patent, printed publication, or ma- chine, and another part in another prior exhibit, and still another part in a third prior exhibit, and from the three or any greater number of such exhibits draw the conclusion that the pat- entee is not the first and original inventor of the patented improvement. ' ' — lb. 128. " A combination is sufficiently described to constitute a compliance with the letter and spirit of the act of Congress if the devices of which it is composed are specifically nanSed, their mode of operation given, and the new and useful result to be accomplished is pointed out, so that those skilled In the art, and the public. COMBINATION"— IN GENEEAL. 67 may know the extent and nature of the claim, ] and what the parts are which co-operate to do the work claimed for the invention." Parks et al. V. Booth, 102 V. S. 96.— Sti^. Ct. 1880. 139. " Old instrumentalities are patentable when combined for the first time in such a man- ner as to produce new and useful results." Willimantie Linen Co. et al. v. Clark Thread Co. et al., 4 Banning & Arden, 133. — Nixon, 1879. 130.' Where an invention pertains to a machine where all the elements are old, and where the in- vention consists in the new combination, " A party guilty of infringing . . . must be shown to have used all the necessary parts of the com- bination." — lb. 131. " Where there is a patent for a combina- tion of old parts there can be no infringement unless all the material parts are used, because, without one of them, the combination or ar- rangement would be different." Burdett v. Estey etal., 16Blatch. 105.— Wheeler, 1879. 133. " In a patent for a combination the use of equivalents known to be such at the date of the patent may be included, "^/i. 133. "It is a' well-known doctrine of patent law that the claim of a combination is not in- fringed if any material parts of the combination are omitted. It is equally well known that if any one of the parts is only formally omitted, and is supplied by a mechanical equivalent, perform- ing the same office, and producing the same re- sult, the patent is infringed." Union Water- Meter Co. V. Desper, 101 TJ. S. 333.— Sup. Ct. 1879. 134. " Our law requires the patentee to specify particularly what he claims to be new, and if he claims a combination of certain elements or parts, we cannot declare that any one of these elements is immaterial. The patentee makes them all material by the restricted form of his claim." — lb. 135. " It is not necessary that the several ele- mentary parts of the combination should act simultaneously." It suffices if the result is the " product of the successive action of all the ele- mentary parts. " Hoeetal.Y. Cottrell et al., 17 Blatch. 546.— Shipman, 1880. 136. As there were prior to the patentee's in- vention structures "having all these elements _ arranged in the same order, although of difier- ent form and capacity, he was entitled only to his particular form of devices, which were really difiEerent from those which had been in use or known before, and the combination of these de- vices with each other or with others so as to produce a new result, or an old result in a new way." Sliarp v. Tifft, 18 Blatch. 183.— Whbelee, 1880. 137. " Generally where a patent is for a com- bination ,of known parts, materials, or elements, it is not infringed by the use of any number of the parts, materials, or elements less than the whole, for the patent in every such case is for that identical combination and nothing else, and a combination of any less number of parts is a different thing. {Prouty v. Buggies, 16 Pet. 336.) But where some of the parts of the com- bination are new, and those parts are taken and used in the same manner, but with different things from the rest of the combination patented, a part of the patented invention is taken although the whole is not, and it is an infringement to that extent." Union Sugar Befinery v. Matthie- son, 3 Fish. P. C. 600.— Cliffoud, 1865. 138. A claim for a combination of old parts is not infringed unless all the parts are used. Faurot et al. v. Hawes, 3 Fed. Rep. 456. — Bax- ter, 1880. 139. Where a portion of the elements of a combination are new, he who appropriates the new parts, and uses something to fill the place of the balance of the elements of the combination is an infringer as to such new parts. Holly V. Vergennes Mach. Co. et al., 18 Blatch. 337. — Wheeler, 1880. 140. If the invention " is of a combination of numerous parts, including in it other new and useful combinations of less of the parts, he seems to be entitled to the exclusive use of these lesser combinations as well as to the exclusive use of the whole." — lb. 141 . " It is not necessary, in order to constitute infringement of a combination patented as such, that the whole combination should be used. If a part of it only, that, separate from the rest, was new and patentable to the inventor, is u.sed, taking that part is an infringement pro tarda." Adair v. Thayer, 17 Blatch. 468.— Wheeler, 1880. 143. "It is a settled rule of law that where a patent is for a combination of known parts, it is not infringed by the use of any number of parts less than the whole. . This principle has been so often reiterated that it is elemen- tary. ' ' Bmmll et al. v. Lindsay et al. , 10 Bissell, 317.— Dyer, 1881. 143. "It is conclusively settled that where a patentee claims as his invention only the com- bination which he describes, the separate parts which constitute the combination are to be re- garded as old, or common and public." — lb. 144. " There is . . a class of combinations, where some of the parts are new and others old. 68 COMBINATION— IN GENEEAL. and where the new parts are claimed as inven- tions. If the combination is of this character the appropriation of the part which is new is an in- fringement. ' ' — 1 b. 145. An element of a combination in order to be new, to the extent of being specifically exempt from appropriation by others than the patentee, must be new of itself, not simply in the use made of it by the patentee. — lb. 146. The patentee must stand by his whole combination in a suit. He cannot abandon a part thereof. He cannot prove any part to be immaterial or useless. ^/S. 147. The doctrine of QUI v. Wells (23 Wall. 1) as to equivalents in combinations stated and followed. — lb. 148. Where defendant substitutes for one old element of a combination another element per- forming a partly different function, the substi- tuted element is not an equivalent. — lb. 149. The doctrine of known substitutes for the element of a combination " is a doctrine of very limited application, and, as a formula, is, perhaps, rather misleading. The true question always is whether the defendant uses anything which the plaintiff invented." — lb. 150. A claim being, as construed, to the com- bination of a spring and a tongue with a side re- cess open underneath, defendant urged that no actual combination existed in that the new form of recess (the broad combination being old) exert- ed no new influence on the spring, and mee -versa. The court found that the new form of recess was " more economical , and would keep the hook more free from dirt," and that this advantage was sufficient to support the combination. Fitch V. Bragg & Co., 8 Fed. Rep. 588.— Ship- man, 1881. 151. " If twoor more persons conspire, one to make one part of a patented combinatign, and another another part, with the intention that the parts should be afterward put together — this is an infringement. But in order to make one who makes and sells parts of the patented combina- tion liable for infringement the parts manufac- tured must be useless in another machine, and they must be sold and manufactured with the understanding that the remaining parts are to be supplied by another and will then be combined for use." Millner v. Schojkld et al., 4 Hughes, 258.— Hughes, 1881. 153. Where the moulds of a pill-making ma- chine hold the pills while the needles pierce them, there is a concert of action which creates a com- bination between the moulds and the needles. McKesson et al. v. Carnrick, 19 Blatch. 158. — BliATCHFOHD, 1881. 153. Where a ''result is attained in abetter mode than was before known" by a union of parts, which have no other new result, a patent- able combination exists. Detroit Lubricator M'fg Co. V. Rencha/rd et al., 9 Fed. Rep. 293.— Matthbws, 1881. 154. " If an alleged infringer uses less than all of the elements of a combination, tod substitutes something for the part which he omits, there is no infringement, unless the substitute is a mere mechanical equivalent." Gross v. lAtermore, 9 Fed. Rep. 607.— Colt, 1881. 155. Devices for shifting and lifting the shoes of a grain drill form a jjatentable combination, the two devices being sometimes operated si- multaneously. Davis et al. v. Brown et al., 19 Blatch. 368.— Blatchfokd, 1881. 156. " A majority of patents granted in mod- ern times are for such inventions" (combina- tions) ; ' ■ and they are none the less entitled to protection, and none the less valuable on this account. . . . Such a machine is infringed when- ever another employs substantially the same combination, in plan and elements, operating in the same manner, and producing substantially ' the same result. . . The doctrine of equiva- i' lents, with slight modification, applies with as i much force to such an invention as to any other. I . . The old elements from which one individ- ual has drawn are open to all. It is the peculiar combination which one has effected that an- other shall not copy. ' ' Dederick v. Cassell et al. , 9 Fed. Rep. 306.- Butler, 1881. 157. " That all the elements of a patented combination may be singly found in prior struc- tures is not a pertinent fact." " It will not an- swer to say . . . that any mechanic might have selected the parts and combined them. . . . The fact that no mechanic did select and combine the parts, . . notwithstanding the great need for it, is a sufficient answer to the suggestion. " — lb. 158. The claim was for " a coffee or similar mill having a detachable hopper and grindlng- shell formed in a single piece and suspended in the box by the upper part of the hopper or a flange thereon, substantially as and for the pur- pose specifled. " Defendant contended that the union was a mere aggregation. The court said : "It is a sufficient answer to this view to say that a hopper and grinding-shell formed in a single piece and suspended in the box by the upper part of the hopper or a flange thereon did not exist before combined in a piill. ... If that combination had existed before, the question whether adding to that the feature of detachabil- ity made another patentable combination might arise; but it does notarise now." Siroh-idge COMBINATION— IN GENERAL. 69 V. Landers et al., 30 Blatch. 73. — Blatchford, 1881. 159. Although there may he no co-operation between an air tube, as such, and a spring at- tached thereto and supporting some other thing, yet since the tube, besides its function with reference to air, performs the function of sup- porting the spring, there is, therefore, such co- operation between the tube and the spring as makes the combination patentable. Cross V. MackiTwn et al., 20 Blatch. 395. — Wheeler, 1882. 160. By the courts : " As to the second point, that the device shows only a mere aggregation of parts and. produces no new result, it is suffi- cient to say the result produced is the transmis- sion of signals to a car wMn in motion which was new, and had never been produced until this com- hination, and that some of the parts in this com- bination perform a new function and the whole combination produces a new result. ' ' Western Electric M'fg Co. v. Chicago Electric M'f 9 Co., 11 Bissell, 437.-BLODGET, 1883. 161. If a defendant omits some of the old ele- ments of a previously existing combination, then defendant does not infringe ; "if he uses the same elements in the same combination he does infringe, although some of his elements differ in form and modes of immediate opera- tion, provided they are known mechanical equivalents. If, on the other hand, lie omits some of the devices in the original or patented combination, and substitutes therefor not a known mechanical equivalent, but an utterly new device, whereby a more beneficial result is effected, his combination is a new one, and not to be excluded from competition With the old. ' ' Washburn & Moen M'fg Co. v. Qi-iesclie, 5 McCrary, 246.— Treat, 1883. 163. ' ' The law as applicable to patents of this character would seem to be as follows : All the component parts must so enter into a combina- .tion of old elements that each qualifies every , other. The result must be the product of the combination, which is patentable provided something new and useful is produced. If the elements of a combination act independently of each other, or if one element acts independently of the others, it is an aggregation of parts and not entitled to protection as a combination. " It is indispensable that a new and useful re- sult should be produced either by the invention of a new thing or a new combination of old things. Unless this is the case, even though the elements act reciprocally and in combination, the requirements of the law are not satisfied. The coipbination must be new, so must the re- sult. " Clarke Pomace Holder Co.y. Ferguson, 31 Blatch. 376. -CoxB, 1883. 163. " The presumption of law where a pat- ent is claimed for a combination simply, is that all the separate elements are old. ' '^Ih. 164. A combination ' ' can only be anticipated by a prior device having identically the same elements, or the mechanical equivalents of those that are used. It will not do to find in older de- vices a portion of these elements in one machine, another portion in a second machine, another in a third, and so on, and then say that this device is anticipated. The inventor does not pretend to be the original inventor of any given one of the elements ; he only claims such an arrangement of these elements as to produce a new machine." Worswick M'fg Co. v. Steiger, 17 Fed. Eep. 350. — Welkbr, 1888. 165. "A mere aggregation of old things is not patentable, and, in the sense of the patent law, is not a combination. In a combination the elemental parts must be so united that they will dependently co-operate and produce some new and useful result." Wood et al. v. Packer, 17 Fed. Rep. 650.— Nixon, 1883. 166. ' ' If the patentee specifies any element as entering into the combination either directly by the language of the claim or by such a reference to the descriptive part of the specification as carries such elements into the claim, he makes such elements material to the combination, and the court cannot declare it to be immate^'ial. It is his province to make his own claim and his privilege to restrict it. If it be a claim to a com- bination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether the omitted part is supplied by an equivalent device or instrumen- tality. " Fay & Co. v. Cordesman et al., 109 U. S. 408.— Sup. Ct. 1883. 167. He who substitutes for one of the ele- ments of a combination a different part, perform- ing the same function is an infringer. Child V. B. & F. H. Iron Works, 19 Fed. Rep. 358.— Lowell, 1884. 168. For example of a defendant held to be an infringer who used complainant's patent- ed combination, substituting an equivalent for one element thereof, see — . Mundy v. Lidger- woodM'fg Co., 20 Fed. Rep. 114.— "Wheeler, 1884. 169. When the prior art approaches very closely to the patented invention, ' ' the defend- ants cannot be adjudged infringers unless they have appropriated, in substantial form of con- struction, the identical elements which the com- plainant has the right to claim as new in his 70 COMBINATION— IN GENEEAL. patent;" and further, to make the defendants liable as infringers, "it must appear that they have appropriated all the elements of the com- plainant's combination, or their equivalents." Saladee v. Bacine Wagon & Oarriage Co. et al., 27 O. G. 1133.— DtBR, 1884. 170. " It is well settled that a claim for a com- bination is not infringed unless all the elements composing the combination, or equivalents therefor, are employed." Qould v. Spicers et al, 20 Fed. Rep. 317.— CoiT, 1884. 171. " Certainly there is no patentable com- bination in a mere aggregation of old devices which produces no new effect or result due to j their concurrent or to their successive joint and co-operating action. But it is by no means es- sential to a patentable combination . . . that the several devices or elements thereof should co- act upon each other ; it is sufficient if all the devices co-operate with respect to the work to be done, and in furtherance thereof, although each device may pei-form its own particular function only." Stutz v. Ai-mstrong & Son, 28 O. G. 367.— ACHBSON, 1884. 172. For example of union of elements claimed to be aggregations, but held to be patentable combinations, see — . — lb. 173. Although all the parts of a combination are old, yet if the parts act together for one purpose, and each has influence in producing the result in a more perfect and reliable manner than was known before, the union is a combi- nation and not a mere aggregation. Railway Register M'fg Co. v. Broadway & Seventh Ave. R. R. Co., 30 O. G. 180.— Wheeler, 1884. 174. Complainant's improvement in paint-cans employed an annular disk with an upwardly projecting bead presenting a round smooth sur- face to the brush. Defendant employed an an- nular disk with a sharp upturned edge. The court held defendant not to infringe in view of the prior art, and said : " One combination is not the same as another if it substantially differs from it in any of its parts." Norton Y. HaigJit, 22 Fed. Rep. 787.— Grbsham, 1884. 175. One combination is not the same as an- other combination, "if it siib.'-.tantially differs from it in any of its parts. This rule is subject to the qualification that a combination may be infringed when some of the elements are employed, and for the others mechanical equiv- alents are used, which were known to be such at the time the patent was granted. " Rowell et al. V. Lindsay, 113 U. S. 97.— Stjp. Ct. 1885. 176. " Where one patented combination is asserted to be an infringement of another, a de- vice in one, to be the equivalent of a device in the other, must perform the same function." — Ih. 177. " A combination is patentable only when the several elements of which it is composed produce by their joint action a new and useful result, or an old result in a cheaper or otherwise more advantageous way. " Stephenson y. Brook- lyn Cross-Town R. R. Co., 5 Sup. Ct. Rep. 777. —Sup. Ct. 1885. 178. "To constitute identity of invention, and therefore infringement, not only must the result attained be the same, but in case the means used for its attainment is a combination of known elements, the elements combined in both cases must be the same, and combined in the same way, so that each element shall perform the same function ; provided, however, that the differences alleged are not merely colorable according to the rule forbidding the use of known equiv- alents." Electric Railroad Signal Co. v. HaU B.R. Signal Co., 114 U. S. 87.— Sup. Ct. 1885. 179. " As a rule, a patent for a combination includes the then known equivalents for the re- spective elements of the combination." Bate Refrigerating Go. v. Mastman, 32 O. G. 517. — Shipman, 1885. 180. "It is a most familiar principle in the law of patents that one who has a combination cannot sue for an infringement any person who does not use his entire combination." Under- wood V. Warren et al., 24 Fed. Rep. 183. — Treat, 1885. 181. Complainant's patented machine was for unhairing and scouring hides and skins. The bed of the table was omitted from the claimed combination. Defendant contended that such bed formed an actual part of the combination, and because not mentioned in the claimed com- bination that claim, therefore, covered a mere ag- gregation. Defendant's contention was over- ruled. McDonald v. Whiting et al., 24 Fed. Rep. 600.— Colt, 1885. 182. Combinations are "patentable where a, new and useful result is produced by their joint action, or an old result in a cheaper or otherwise' more advantageous manner. . . An old result may be sufficient when it is produced by the combination in a cheaper or otherwise advan- tageous manner." Railway Reg. M'f'g Co. v. My)-th Hudson County Railway Co. et al. , 26 Fed. Rep. 411.— Nixon, 1886. 183. " A great majority of patents are for im- provements in old and well-known devices, or on patented inventions. Changes in the con- struction of an old machine, which increase its usefulness, are patentable. ... So a new com- COMBINATION— UNPATENTABLE. 71 bination of new devices, whereby the effective- ness of a machine is increased, may be the sub- ject of a patent. " Cantrelletal. v. Wallick, 117 U. S. 689.— Sup. Ct. 1886. 184. " A combination is patentable (1) if it produces new and useful results, though all the constituents of the combination were well known and in common use before the combination was made, provided the results are a product of the combination, and not a mere aggregation of sev- eral results, each the product of one of the com- bined elements ; (3) if it produces a different force, effect, or result in the combined forces or processes from that given by their separate parts, and a new result is produced by their union ; (3) if it either forms a new machine of distinct character or formation, or produces a result which is not the mere aggregate of sepa- rate contributions, but is due to the joint and co-operating action of all the elements ; (4) when the several elements of which it is composed produce, by their joint action, either a new and useful result, or an old result in a cheaper or otherwise more advantageous way. ' ' Niles Tool- Works V. Belts Machine Co., 37 Fed. Rep. 301. —Wales, 1886. 185. "The law does not encourage or sanc- tion the defeat of combination patents on the ground that the several parts are old, if the combination is new and useful." May\. County of Fond du Lac, 27 Fed. Rep.' 691.— Dyer, 1886. 186. " The ordinary doctrine in law concern- ing patents is that if a party insists on a patent for a combination of devices (whether new or old is not material), each element of the combi- nation is an essential element ; so that one who uses a combination in some respects, but omits one of the elements that the patentee chooses to describe as essential, the supposed infringer does not infringe. ' ' The patentee is supposed to describe clearly and fully all the elements which he thinks es- sential to produce the result described. If he chooses to crowd his supposed inventions or combinations with elements that have no func- tions whatsoever, and a party chooses to use a like contrivance, omitting some of these ele- ments, he does not infringe. The reason of the rule, as explained by the Supreme Court very frequently, is this : that first, a party claiming a patent should not incumber the combination or device with matters that are wholly unessen- tial, and thereby block the path of improvement or invention. If he chooses to put such in his contrivance, he must abide by the result." Bo!/er v. Sohult Belting Co., 38 Fed. Rep. 850. —Treat, 1886. 187. Where a patent is for a combination, the fact that its main features are old, considered singly, does not limit the complainant to the ex- act form of the mechanism found in the patent. The patent is to receive a reasonably broad con- struction, and those phould be held to be in- fringers who accomplish the same result with substantially the same or equivalent means. Boston Electric Co. v. Fuller et al., 39 Fed. Rep. 515.— Colt, 1886. 188. "Where a patent consists of more than one device, or what is called a combination pat- ent, the person charged with an infringement must be shown to have used all the devices or I processes described in the patent. He may use I one or more, but less than all, and still not in- 1 fringe such combination patents." Byerly I V. Cleveland Linseed- Oil Works, 31 Fed. Rep. j 73.— Welker, 1887. I 189. In a machine for rolling saw-logs the claim was : " In a log-turning device, the spike bar F, having spikes F" in combination with the piston-rod D", and the piston-head D'" of a steam cylinder A, constructed and operating substan- tially as and for the purpose described." The machine would not operate without a certain rear pressure roll, and the court held that the claim did not describe patentable subject-mat- ter. Ton-ant v. Buluth Lumher Co., 30 Fed. Rep. 830.— Nelson, 1887. 190. "To infringe a patent for a combination, it is necessary to use each member of the com- bination, or its equivalent, substantially as set forth ; and if the use of less than the whole can be an infringement, it is only where the part used, separate and apart from the rest not used, was new and patentable to the inventor." Thoens v. Isreal, 81 Fed. Rep. 556. — Pardee, 1887. 191. As regards a patent for a combination, ' ' of course any party has a right to use any one or more of those elements, because the patent does not cover them separately. But he may not use that combination, or anything which, taking the various elements, by a mere change in form of one or the other, works out the same result in the same way and by substantially the same process. ' ' Westinghouse Air-Brake Co. v. Carpenter, 33 Fed. Rep. 484.— Brewer, 1887. COMBINATION— UNP ATBNT ABLE. Cases. 1. " The mere addition of an old device pro- ducing a specific result, to another device pro- 72 COMBIInATION— UNPATENTABLE. ducing its own result, in sucli wise that their combination produces those two same results, and no other, is not an invention. ' ' Hailes et al. V. Van Wormeretal.,1'B\aXch..4M.—WooD- RUFF, 1870. 2. "It would not be an invention to combine a known tool with a known machine, if the com- bination required nothing beyond the ordinary skill of a mechanic ; and this would be a fortiori, if the combination had already been suggested. ' ' Bailey Washing and Wringing Machine Co. v. LiTicoln et al., 4 Fish. P. C. 379. — Lowell, 1871. 3. "A mere aggregation of parts, whereof the patentee has not the exclusive right to either, and in which the parts have no new operation and produce no new result which is due to the combination itself, is not patentable. ' ' • Sarcen V. Hall et al., 9 Blatch. 524.— "Woodetipf, 1872. 4. "A combination of devices would not nec- essarily be patentable from the mere fact that their union produced a better device. " "If the superiority arose from the fact that the two were intrinsically better than others, and the" device " combined both — each, however, operating in- dependently of the other — the combination would be but the exercise of judgment in the choice of parts, and not invention in discover- ing new means to produce useful or better re- sults." — lb. I 5. The patent in suit was for an improvement | in stoves, and a claim thereof was " a vessel over the fire-pot to receive the coal, and let it down I by way of supply on the fire below, the lower | end of the vessel being narrower than the up- 1 per. ' ' It was held that this was not a patentable combination, but a mere aggregation, because the revertible flues had no more to do with the stove supplied by a feeder than they would have with a stove supplied by hand. Hailea et al. v. VanWormeretal., 20 Wall. 353.— Sup. Ct. 1873. 6. "A new combination, if it produces new and useful results, is patentable, though all of the constituents of the combination were well known and in common use before the combina- tion was made. But the results must be a prod- uct of the combination and not a mere aggre- gate of several results, each the complete produc- of one of the combined elements. Combined results are not necessarily a novel result, nor are 'they an old result obtained in a new and im- proved manner. Merely bringing old devices into juxtaposition, and there allowing each to work out its own effect without the production of something novel, is not invention. No one bringing together old devices without producing a .new and useful result, the joint product of the elements of the combination and something more than an aggregate of old results, can ac- quire a right to prevent others from using the same device, either singly or in combinations, or even if a new and useful result is obtained, can prevent others from using some of the devices, omitting others in combination." — Ih. 7. " If, to attain the utility and convenience which the union of two implements produces, something new in the construction of the im- plements, or some new device requiring thought or study, more or less, is necessary to unite them, such union may be patentable. " . . "When the functions and uses of each are unailected by the' union, and the means of uniting has no nov- elty, it is not obvious, certainly, that anything of invention can be alleged of the combined im- plements. . . . That the aggregated result may be very convenient, may, for that reason, be pop- ular, and may find a ready sale and show a great demand, does not determine the question. ' ' Reck- endorfer v. Fdber, 12 Blatch. 68. — Woodkdff, 1874. 8. " The aggregate result may be the produc- tion of a better structure, as an aggregate, than was ever before produced, and yet, for the lack of novelty of device or new result produced by the aggregation and due thereto, it may have no patentable quality." — lb. 9. " The aggregation of devices, each of which is old, so that each may work out its own effect without the production of something novel arising from the co-operation of the devices, is not a new result. " Metropolitan Wringer. Ma- chine Co. V. Young et al., 14 Blatch. 46. — Wal- lace, 1876. 10. The claims of a patent were : " 1. A pen- cil composed of a wooden sheath and a leaden core, having one end of the sheath enlarged and recessed to constitute a receptacle for an eraser or other similar article, as shown and set forth. " 3. A pencil, the wooden case of which grad- ually tapers from its enlarged and recessed head toward the opposite end for the whole or a por- tion of its length, substantially as shown and de- scribed. " Both were held to cover mere aggre- gations. Beckendorfer v. Faier, 93 U. S. 347. — Stjp. Ct. 1875. 11. " The combination, to be patentable, must produce a different force, or effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union ; if not so, it is only an aggregation of separate elements."— n. 13. "A patent for a combination cannot be maintained where nothing is done except to COMBINATION— UNPATENTABLE. 73 bring •well-known devices into juxtaposition, each working its own effect, and tlie aggregate producing no new and useful result." Kerosene Lamp Heater Co. v. Littell, 3 Banning & Arden, 313.— Nixon, 1878. 13. A claim for complainant's patent was : " In combination the lay and its rigid shuttle-box, the pivoted vibrating wire trough, the recipro- cating driving slide, and the latch moving there- on, the latter being operated by the wire box, the combination being and operating substan- tially as described." The court found that the lay and the wire-motion did not join together in doing anything, and that this was a claim for an aggregation rather than for a patentable com- bination. Webster Loom Co. v. Higgins et al., 15 Blatch. 446.— Wheeler, 1879. 14. A claim was for " the convex metallic washer in combination with the staple." The' court said : ' ' The bail ear and the washer per- form separate and distinct functions, the distinct office of neither being changed nor affected by the operation of the other ;" and held the combina- tion to be a mere aggregation, Double Point lack Co. V. Two Rivera M'fg Co. et al. , 9 Bissell, 358.— Dtek, 1880. 15. A large box with two compartments and a window to the upper compartment being old, it is mere aggregation and duplication to add another window to the upper compartment. Slawson v. Grand St. , Prospect Park and Mat- bush B. R. Co., 17 Blatch. 513.— Bbned:ct, 1880. 16. " In order to constitute a patentable com bination, the result must be some effect different from the effect of the separate parts, and pro duced by the combined forces." — lb. 17. "A new result must arise from the union of the elements of the combination, and not sim- ply from the separate action of each element. " —Lb. 18. The idea of barbing fence wire was the subject of one patent. The idea of fixing the barb rigidly on the wire by twisting another wire upon it was subject of a second patent. The looping of the barb around the fence wire was the subject of a third patent. A fourth patent j was for all these features combined ; it was held j not to embody patentable invention. WasMmrn & Moen M'fg Co. et al. v. Haish, 10 Bissell, 65. - Blodgbtt & Drummond, 1880. 19. ' ' There are, undoubtedly, oases where a combination may be made of parts never com- bined before, where no invention is involved ; such is the case where a well-known contrivance is used to perform a function exactly analogous to that in which it was formerly used. ' ' Wisner et al. V. Grant et al., 7 Fed. Rep. 485.— Wal- lace, 1880. 30. A union of devices for steaming the in- terior of an oil well, and a pipe with a cock in it for taking away the gas arising from within the well, is not a patentable combination, but is S, mere aggregation, in view of the fact that a well can be steamed without the gas pipe. Doubleday v. Roess, 11 Fed. Rep. 737.— Ache- son, 1880. 31. A device for forming the interior of a crucible on a potter's wheel was old ; a mould for forming the exterior was old. Complainant joined the two, and claimed the union as a com- bination. Held to be a mere aggregation. Pickering et al. v. McCullough, Dalzell & Co., 104 U. S. 310.— Sup. Ct. 1881. 33. " In a patentable combination of old ele- ments, all the constituents must so enter into it as that each qualifies every other. ... It must form either a new machine of a distinct charac- ter and flmction, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of sepa- rate contributions. Otherwise it is only a mechan- ical juxtaposition and not a vital union." — Lb. 83. Double recessed lap- joints in sheet-metal structures being old, and soldering by dipping being old, and complainant's alleged invention consisting in " a can or other vessel made of sheet metal, in which the top and bottom is joined to the sides of a double recessed lap joint, ' ' the court said ; ' ' The patentee has merely ag- gregated these elements in hi.s can, without caus ing them to perform, by their united action, any function which they did not perform separately before. . . . In the conception or material embodiment or operation of such u union of well-known ele- ments, we cannot detect any patentable merit. ' ' Combined Patents Can Co. v. Lloyd, 11 Fed. Rep. 153.— McKennan, 1883. 34. A patent being in existence for the com- '. bination of a straw-feeding attachment with a boiler furnace generally, and return-flue boilers being, of themselves, old, a patent was taken for the combination of the straw-feeding attach- ment and return-flue boilers. The latter patent was held void on the ground that the use made of the feeding attachment therein was analogous to the former use. Also that " in the combina- tion each operates separately, producing its own results." ILiald v. Rice, 104 U. S. 737.— Sdp. Ct. 1883. 35. An anti-clinker opening between a dump- ing-grate and the bottom of the fire-pot above it, with the grate larger in area than such bottom. 74 COMBINATION— UNPATENTABLE. was old. DoTTOwardly contracted fire-pots were old. There was no new effect had by uniting the two, ifeW to be aggregation. Perry et al.. Trustees v. Co-operative Foundry Co. et al., 20 Blatch. 505.— Blatchfobd, 1882. 26. An anti-clinker opening in a dished grate and a fire-pot were old. The union of the two involved no invention. — lb. 27. Windows in the draft chamber of a stove are not patentable in combination with adjoining flues. — lb. 28. " There was no invention in substituting an old grate in two parts for another old grate made in one part, preserving the same relation of the grate to the fire-pot and to the ash-pit walls, when no distinctive effect in the combina- tion resulted from the substitution. "—lb. 29. A window in the ash-pit of a stove cannot modify or effect the action or operation of the grate or the anti-clinker space. — lb. 30. By the court: "There existed in prior structures a fire -chamber having its clinker dis- charge end grated or illuminating, and project- ing downward into an air-chamber ; a grate surface or fire-bed projecting beyond the inside diameter of the clinker-discharge end of the fire-chamber ; and a clinker-cleaning opening be- tween the grate surface and the fire-chamber over it. There also existed before, in combination, a fire- chamber with its non-grated clinker dis- charge end projecting downward into an air- chamber, a grate surface or fire bed projecting beyond the inside diameter of the clinker-dis- charge end of the fire-chamber, and a clinker- cleaning opening between the grate surface and the fire-chamber above it. It was no invention to substitute in such combination for a fire- chamber with its clinker- discharge end non- grated, a fire-chamber with a grated clinker- discharge end. The substitution worked no change in the operation of the laterally project- ing grate surface end of the clinker-cleaning opening in unison with a fire-chamber having its clinker-discharge end projecting downward into the air-chamber. ' ' — Tb. 31. By the court : " There is no relation or co- action between the contracted lower end of Spear's fire-pot and the laterally projecting grate, and the space outside of the grate which did not exist between the lower ends of the uncontracted fire-pots and the projecting grates and the outside spaces in prior structures. " In view of all this there was no patentable invention in the idea that contracting the lower end of the fire-pot, with the consequent lessen- ing of the area of the grate, would enlarge the outside space." — lb. 33. By the court : " This claim is merely for an aggregation of prior reyertible flues with the other three features before existing In unison in the same stove— namely, an anti-clinker opening, mica windows, and an isolated grate, and does not contain any patentable invention. The last- named three features operate together in the same way in a stove without revertible flues and in a stove with them, and no combined patent able result is due to the union." —lb. 33. For example of a broad claim held void as being a claim for an aggregation, with an inti- mation that a more specific claim would be ten- able, see — . Thaeher Heating Co. v. Burtis et al'., 13 Fed. Rep. 569. —Wallace, 1882. 34. By the court ; " It is obvious that a plain ring, or a ring with radial slits, has the same action in combination with an annular recess, in which it is held by its elastic force alone, so far as regards its readjustment in the recess when disturbed, that a ring with non-contiguous pro- jections has. The co-action between the recess and the part of the ring in it when the part of the ring out of it and next to the stock is dis- turbed, is the same in all the cases. Therefore if the ring with inward non-continguous pro jections existed before, even though, without the annular recess, there was no patentable inven- tion in using such ring with the old aniiular recess with which the plain ring had been used. ' ' Searles v. Merriam et al., 30 Blatch. 263. — Blatchfokd, 1883. 35. "A mere aggregation of old things is not patentable, and in the sense of the patent law is not a combination. In a combination, the el- emental parts must be so united that they will de- pendently co-operate and produce some new and useful result." Wood et al. v. Packer, 17 Fed. Rep. 650. —Nixon, 1883. 36. A washer coiabined with a common form of staple being old, there is no invention in com- bining such a washer with a new form of staple when the washer does not affect the function performed by the new form of staple. Such a combination is a mere aggregation. Double- pointed Tack Co. V. Two Rivers M'fg Co. et al., 109 U. S. 117.— Sep. Ct. 1883. 37. By the court : " Claim 2 is merely for an aggregation of parts and not for a patentable combination, there being no patentable relation between a portable reservoir with a flue within its rear side and the existence of portability of i a base pan beneath it. ' ' Bussy et al. v. Excelsior- M'fg Co., 110 U. S. 131.— Sup. Ct. 1884. 88. There is • ' no patentable relation between a damper for the middle flue of a three-flue stove and the existence of portability of a base COMBINATION— UNPATENTABLE. 75 pan or the existence of a ■warming closet." —n. 39. " There is no patentable combination, prop- erly so called, in an aggregation of devices which liave no common purpose or effect, concurrent or successive. ' ' Tower v. Semis cfc Gall Hardware and Tool Co. et al., 19 Fed. Rep. 498. —Lowell, 1884. 40. "A broad claim cannot be sustained for merely putting together two old tools for con- venience of manipulation in several and wholly distinct uses ; . . . the patent must be limited to some patentable improvement, either in the mode of combining the tools or in one or more of the tools themselves." — lb. 41. Abroad claim for " aggregating any pipe- wrench with any monkey-wrench upon a single handle cannot be sustained. ' ' — / b. 43. Complainant's patent was for a ventilating louver, and the claim in issue was for the com- bination of a reticulated covering with the gut- ters or slats. Thereof the court said : " The reticulated covering operates as a screen precisely as it would if there were no slats. Neither op- erates any differently or accomplishes any result in connection with the other different from what it would if the other was not there. They appear to form a mere aggregation and not a patentable combination. ' ' Hdi/es v. Bickellumpt, Sr., 21 Fed. Rep. 567.— Wheeler, 1884. 43. The patented combination was a mirror placed in the hood over a street-car driver's head, with a glass panel in the door behind him, so tliat he might see people desiring to hail the car from behind him. The combination was held to be a mere aggregation. Steplieiuon v. Brook- lyn Gross-Town B. B. Go., 5 Sup. Ct. Rep. 777. —Sup. Ct. 1885. 44. Vertically sliding flexible slat doors were old ; common car doors were old. A patentee combined the old-fashioned car door with an inner, flexible, sliding door, and claimed a com- bination patent therefor. The combination was held to be a mere aggregation. Watson v. Gin- einnati I. St. Lo. <& G. By. Go., 23 Fed. Rep. 443. —Woods, 1885. 45. Complainant's alleged combination was for a union of a desk-board with the well-known church book-rest, and was held to be a mere aggregation. Pea^d v. Johnson, 23 Fed. Rep. 507.— CoxE, 1885. 40. A claim was practically for the combina- tion of two pairs of dies. These two pairs of dies " were not combined in one machine, and did not co-operate in one result. Each pair was used by itself, and might be so used at any dis- tance of time or place from the other ; and if the two were used at the same place and in imme- diate succession of time, the result of the action of each was separate and distinct, and was in no way influenced or affected by the action of the other. There was no combination that would sustain a patent. ' ' Beecher Iff'g Go.Y.At- waterM'fg Go. et al., 114 U. S. 523.— Sup. Ct. 1885. 47. To introduce vertical springs underneath a coiled wire bed-fabric, such springs having been used in other bed-fabrics, is not invention. The new union constitutes a mere aggregation. Ames et al. v. Garleton Spring Bed Co. et al., 32 O. G. 1238.— Blodgbtt, 1885. 48. "A patent for a combination is not in- valid because all the parts are old. But merely assembling them together or placing them in juxtaposition does not indicate invention. Some new or peculiar function produced by such a combination must be developed. Unless this follows, the new arrangement is the mere exhi- bition of mechanical skill." It appearing to the court that in the combina- tion of complainant's patent " none of the parts shown in the construction perform any different function than that performed in other patents or combination," the patented device was held to be a mere aggregation. Scott M'fg Go. v. Sayre, 26 Fed. Rep. 153.— Nixon, 1885. 49. To combine the parts of two existing ma- chines, leaving the parts in the new union to work as before, does not constitute a patentable combination, but merely an aggregation. Troy Laundry Machinery Go. et al. v. Bunnell, 23 Blatch. 558.— Wallace, 1886. 50. "It is not invention merely to bring old devices into such juxtaposition as will allow each to work out its own effect without contributing any new function or mode of operation to the other. . . It may involve invention to make changes or modifications in parts which were substantially old, in order so to combine them as to affect their efficient co-operatiou. Where such changes constitute the invention, the claims of the patent must be carefully limited, either by express terms or by fair construction, to the precise movement which is the subject of the invention. ' ' — lb. 51. Where a certain seed-cleaner is old, and a certain thresher is old, a claim construed to cover the use of any seed-cleaner in combination with any thresher cannot be sustained. Newark Machine Go. v. Hargett et al, 36 O. Gc. 692.— Bond & Mokbis, 1886. 52. The claim of complainant's patent in suit was : "3. In a straw-stacking machine the wind- 76 COMITY. lass sp, mounted on a shaft «', the cogged gear- ing eg eg, shaft «", and crank cr, the shaft «' being provided with a ratchet engaging a pawl on the frame, as set forth in combination with the chain eh, and carrier-arm P, substantially as described and for the purpose set forth.'' The court held this to be an aggregation of well-known devices which, in their new relation, if it could be called new, performed no new office. Hasselman v. Oarr et al., 37 O. G. 1136. —■Woods, 1886. 53. Where the elements of a combination are old and the constituents do not qualify each other in any way, the combination is not patent- able. Leonard v. Lovell, 39 Fed. Rep. 310. — Sevbkans, 1886. 54. The patent in suit was for a fireplace heat- er, with claims as follows : " 1. A base-burning fireplace stove in which are combined the fol- lowing elements— namely, a cylinder or body projecting outward from the mantel or frame, a f u.el magazine or feeder within the cylin,der, and an opening through which the said magazine can be fed from above. 3. A fireplace stove or heater in which the magazine is extended to the feed opening of the outer casing. ' ' Thereof the court said: "It is conceded that these claims are to be construed broadly, so as to cover the combina- tion of a fireplace heater having a body project- ing outward from the mantel or frame, and a furnace-like portion of the chimney behind the mantel, with a fuel receptacle within the cylin- der of the heater which will preserve a supply of unignited coal while the heater is in opera- tion, and an opening through which the maga- zine can be fed from above, the magazine ex- tending to this opening. " The court said further that it ^as admitted that what the patentee did " was to transfer this well-known fuel magazine from its use in an out-standing base-burning stove to a fireplace heater, equally well known and in common use as to its arrangement, con- struction, position, and mode of operation." Claims held to cover mere aggregations. That- cJier Heating Co. et al. v. Burtis et al., 131 U. S. 386.- Sup. Ct. 1887. 55. By the court of the above : " There is no specific quality of the result which cannot be definitely assigned to the independent action of a single elemenf. There is, therefore, no patent- able novelty in the aggregation of the, several elements considered in itself. " — lb, 56. Bringing together an old cracker machine and an old automatic stopping device does not make a patentable invention. Duesh v. A. J. Medlar Co., 30 Fed. Rep. 619.— Butlbb, 1887. 57. The improvement of the patent in issue, as expressed in the claim, was : "A water-closet basin having a concave bottom, a tubular rim, and openings for the flushing water, a single central connection at the back for the water supply pipe, a vertical discharge pipe, with a closed rounding upper end at the back of the closet and below the water supply pipe, and a short tube passing off at one side of and near the upper end of the discharge pipe, so as to re- ceive the ventilating pipe and be clear of the water supply pipe." The patentee had selected from various prior patents such parts as he thought desirable, and by their union produced a superior contrivance, but not a new or differ- ent result from any that had been obtained be- fore, nor an old result in a better or different way. His combination was held not patentable. J. L. Mott Iron Work» v. Skirm et al., 80 Fed. Rep. 631.— Wales, 1887. 58. The claim of the patent in suit was : ' ' The combination of the burnishing tool, rest for the face of the sole, and finger rest in a ma- chine for burnishing sole edges. ' ' A burnishing tool with a rest for the face of the sole had been used, and the finger rest had also been used ; the combination was held to be unpatentable. Union Edge Setter Co. y. Keith, 31 Fed. Rep. 46. —Colt, 1887. COMITY. Cases. 1. " The rule of comity, always observed by the justices of the Supreme Court in cases which admitted of being carried before the whole court, was to conform to the opinions of each other, if any had been given. Such decisions amounted to authority which, though not conclusive, were operative whenever the question should be car- ried up." WasMurn et al. v. Oould, 3 Story, 132.— Story, 1844. 3. Where a decision by another court upon the same patent is cited, and defendant was not a party theyito, and defendant's machine was not there in controversy, it is not binding, al- though entitled to respectful consideration.— Smith V. Downing et aZ., 1 Fish. P. C. 64. — Woodbury, 1850. 8. "Much deference is due to the judgment of every court of co-ordinate jul-isdiction, " Putnam v. Terrington, 3 Bann. & Ard. 387. — Nixon, 1876. 4. The patent in suit had been thoroughly lit- igated and sustained in the first circuit. In a subsequent suit in the same circuit provisional injunction was asked for. Defendants showed that a litigation over the same question was pending in the second circuit, and urged that COMITY. 77 comity required a withdrawal of the injunction until the termination of the suit in the second circuit. The court granted injunction. Atlan- tic Oiant Powder Co. v. Goodyear, 3 Bann. & Ard. 161.— Shbpley, 1877. 5. " The same rule ought to prevail through out the country in respect to infringement of the same patent by the same means, as well as upon other questions in respect to other subjects." Ooodyear Dental Vulcanite Co. v. Preterre, 15 Blatch. 274.— Wheblek, 1878. 6. Where different courts have decided differ- ently upon a patent, comity does not require a court to favor one side or the other. United States Stamping Co. v. King et al., 17 Blatch. 55. — Blatchfobd, 1879. 7. Where different courts have held different ways as to the same patent, comity does not re- quire still another court to be bound by either decision. American Cotton Tie Supply Co. v. Bullard et al., 17 Blatch. 160.— Blatchfobd, 1879. 8. " Comity would induce a following of the views of a co ordinate court on questions . . . directly raised, considered, and decided." At- lantic Qiant Powder Co. v. Rand et al., 16 Blatch. 350.— Blatch. 1879. 9. The circuit judge of the second circuit having found complainant's patent valid and infringed, after a very full consideration upon a motion for provisional injunction, the court for another circuit followed that finding in a hearing upon the merits against other defendants. Ham,- menchlag v. Garrett et al., 9 Fed. Rep. 43. — Butler, 1881. 10. If the same question raised in a case in one circuit has been adjudicated in another cir- cuit upon the same testimony, the judge in the former case will feel bound to follow such ad- judication. EdgaHon et al. v. Furst & Bradley M'fg Co. et al., 10 Bissell, 402.— Blodgett, 1881. 11. By the court: "The greatest respect which we entertain for the opinion of that court, as well as interstate comity, would readily lead us to accept its decision as controlling this case, if the truth of the facts on which it was based were not controverted and seriously questioned here. ' ' Spring et al. v. Domestic Sewing Ma- chine Co., 9 Fed. Rep. 505.— Kixon, 1881. 13. "It would be proper, as it is usual, to follow the former decision on final hearing in another circuit court." Strobi-idge v. Landers etal., 30 Blatch. 73.— Blatch. 1881. 13. By the court : ' ' The respect due to these judgments and the importance of consistency and the uniformity of decisions in courts of co- ordinate jurisdiction, where the same subject- matter is involved, requires this court to adopt the judgments referred to." Am. Ballast Log Co. V. Cotter, 31 O. Q. 1030.— Butleh, 1883. 14. By the court : " Upon general questions of law we listen to the opinion of our brother judges with deference, and with a desire to con- form to them if we can consistently do so ; but we do not treat them as conclusive. In patent causes, however, where the same issue has been passed upon by the Circuit Court sitting in an- other district, it is only in cases of a clear mis- take of law or fact, of newly -discovered testi- mony, or upon some question not considered by such court, that we feel at liberty to review its findings." Searles v. Warden et al., 11 Fed. Rep. 501.— Brown, 1883. 15. The Supreme Court of the District of Columbia, " like the other courts of the country, is charged with the examination for itself of the questions involved in complaints of infringe- ment ; and the circumstance that to this court,' located at the seat of Government, is trusted the exceptional jurisdiction of determining appeals from the decrees of the Commissioner of Patents may well be considered as imposing upon it a special duty of making such examinations with care and of deciding only upon its own convic- tion of the merits of the case." Schillinger V. Cranfwd, 37 O. G. 1349.- Hagnee, 1885. 16. "It would be unseemly that one rule of property in patents should prevail" in one part of the country " and another in other parts of the country, where the same, title may be brought into litigation." Celluloid M'fg Co. v. Zylonite Brush & Comb Co. et al:, 37 Fed. Rep. 391.— Wallace, 1886. 17. By the court : " We do not understand that the weight given by one circuit court to tlie adjudication of another rests entirely upon the basis of comity, but as well upon that of recognized rights and of convenience, and that it is largely to prevent the necessity of more than one court going through with the investigation of the same facts that the inference derived by the first court is for the purpose of determining whether or not an injunction shall go till the final decree adopted by the other circuit courts." Am. Bell Teleplwne Co. et al. v. National I. Telephone Co. et al., 37 Fed. Rep. 663, per cu- riam,, 1886. 18. While the decision of one court is not bind- ing upon another court, ordinarily, " a proper regard for certainty and uniformity in the law re- quires that the courts of one circuit shall follow the decision of another covering the same ques- tion, and e.specially the same letters-patent." 78 COMMISSIONBE OP PATENTS. Worswiek M'fg Co. et al. v. Philadelphia, 30 Fed. Rep. 635, per curiam, 1887. 19. A proper regard for uniformity of deci- sion, especially in litigations over patents, should incline a court to hold a patent valid vphere an- other court has previously done the same, against substantially the same defendants, until all con- troversy is put at rest by decree of the Supreme Court. Hammerschlag M'fg Go. v. Bancroft, 40 O. G. 1339.-GBBSHAM, 1887. COMMISSIONER OF PATENTS. "Commissioner op Patents" in the Pat- ent Acts. Act approved April 10th, 1790. Section 1. Provides that an application for patent shall be made to " the Secretary of State, tlie Secretary for the Department of War, and ""the Attorney^General of the United States." [Repealed February 31st, 1793.] Act approved February 31st, 1793. Sbc. 1. Provides that applications for patent shall be made to the " Secretary of State," after- ward to be examined by the " Attorney-General of the United States. ' ' [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 1. Be it eiiMcted by the Senate and House of Mspresentatives of the United States of America in Congress assembled. That there shall be estab- lished and attached to the Department of State an office to be denominated the Patent Office ; the chief officer of which shall be called the Commissioner of Patents, to be appointed by the President, by and with the advice and con- sent of the Senate, whose duty it shall be, under the direction of the Secretary of State, to super- intend, execute, and perform all such acts and things touching and respecting the granting and issuing of patents for new and useful discove- ries, inventions, and Improvements, as are herein provided for, or shall hereafter be, by law, di- rected to be done and performed, and shall have the charge and custody of all the books, records, papers, models, machines, and all other things belonging to said Office. And said Com- missioner sliall receive the same compensation as is allowed by law to the Commissioner of the Indian Dejpartment, and shall be entitled to send and receive letters and packages by mail, relat- ing to the business of the Office, free of postage. Sec. 5. And be it furtlier enacted. That all patents issued from said Office shall be issued in the name of the United States and under the seal of said Office, and be signed by the Secre- tary of State, and countersigned by the Com- missioner of the said Office. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 11. And be it further enacted. That in case of the death, resignation, absence, or sick- ness of the Commissioner, his duties shall de volve on the assistant commissioner until a sue cesser shall be appointed, or such absence or sickness shall cease. Sec. 19. And be it further enacted. That the Commissioner, subject to the approval of the Secretary of the Interior, may from time to time establish rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. [Repealed June 33d, 1874.] Act approved June 33d, 1874. Sec. 481. TheCommissioner.of Patents, under the direction of the Secretary of the Interior, shall superintend or perform all duties respect- ing the granting and issuing of patents directed by law ; and he shall have charge of all books, records, papers, models, machines, and other things belonging to the Patent Office. Sec. 483. The Commissioner of Patents, sub- ject to the approval of the Secretary of the In- terior, may from time to time establish regula- tions, not inconsistent with law, for the conduct of proceedings in the Patent Office. Cases. 1. " It is undoubtedly true that the Secretary of State may be considered, in issuing patents, as a mere ministerial officer." Orant et al. v. Baymond et al., 6 Peters' C. C. 318.— Sup. Ct., 1833. 3. Where a patent is signed by a person as acting commissioner, he will be presumed to be acting legally till the contrary is shown. Wood- worth et al. V. Hall et al., 1 W. & M. 348.— Woodbury, 1846. 3. Under Section 3 of the patent law of 1836, the chief clerk may act as Commissioner, not only when the Commissioner's office is en- tirely vacant, but also when he is really ab- sent from sickness or other necessary cause. Woodworth v. Hall et al., 1 W. & M. 389.— Woodbury, 1846. 4. The Commissioner of Patents is presumed to have done his duty in all particulars till the contrary is shown. Woodworth et al. v. Ed- wards et al., 3 W. &M. 130.- Woodbury, 1847 5. The Commissioner of Patents is not bound to respond to orders for copies where the de- mand is accompanied with rudeness and insult, sucli a demand not being a legal demand. But if the same person subsequently makes a proper COMMISSIONEE OP PATENTS. 79 demand for such copies, the Commissioner must comply with it. Boyden v. Burke, 14 Howard, 575.— Sup. Ct. 1852. 6. The Commissioner " has no power to con- firm a patent obtained by false suggestion, either by pardoning the offence or excusing it on the plea of innocent ignorance." Mini's Assignee V. Adams, 3 Wall. Jr. 20.— Gkibr, 1854. 7. It was objected to the patent in suit that it was signed by "an acting Commissioner of Patents, " and that the record contained no aver- ment or proof of his title to the office. Thereof the Supreme Court said : ' ' Tlie court will take notice judicially of the persons who from time to time preside over the Patent Office, whether permanently or transiently ; and the production of their commissions is not necessary to support their official acts." York & Maryland Li-ne R.B. Co. V. Winans, 17 Howard, 30.— Sup. Ct. 1854. 8. By the act of July 4th, 1836, the chief clerk of the Patent Office was made acting Commis- sioner, in the necessary absence of his chief. By the act approved July 23d, 1868, this duty of acting Commissioner devolved upon the old- est examiner. July 24th, 1868, the chief clerk, acting as Commissioner, endorsed a patent as extended. The extension was held invalid. American Wood-Paper Co. v. Olen Falls Paper Co., 8 Blatch. 518.— Woodktjff, 1871. 9. " The decision of the Commissioner upon a question of fact, upon which he is authorized to pass, is unimpeachable, except upon the ground that it is ultra vires. An infringer can- not assail it for fraud, much less for mere error of judgment. " MMillin et al. v. Barclay et al. , 4 Brews. 275.— McKennan, 1871. 10. Although a bill of complaint may allege that a patent was extended by the Commis- sioner, an extension by an acting commissioner fulfils the averment. Dorsey Harvester Revolv- ing-Rake Go. V. Marsh et al., 6 Fish. P. C. 387. — McKenkan, 1873. 11. "A provisional officer who is invested by law with the functions of the Commissioner of Patents is properly described as a Commissioner, so far as the efficacy of his official acts is con- cerned, and for this purpose only is it necessary to describe him at all. The validity of his act is the essential subject of inquiry." — lb. 12. " The actual incumbent of a public office is presumed to be in the lawful possession of it, and no affirmative proof of his title is required to support his official acts. This is a familiar maxim." — Tb. 13. " The contingency upon which the exam- iner-in-chief is authorized to assume the duties of Commissioner is primarily to be taken to ex- ist from his actual discharge of these duties. ' ' —lb. 14. The burden of proof is upon him who de- nies the validity of the acts of the Commissioner. —lb. 15. " In a suit by a patentee against an in- fringer, it cannot be shown that the Commis- sioner who granted the patent exceeded or irregularly exercised his authority, except by matter apparent on the face of the patent, and it is conclusively valid until it is success- fully impeached in a direct proceeding, properly instituted for that purpose." — lb. 16. "Where . . an act is to be done, or a patent granted upon proofs to be laid before a public officer, upon which ho is to decide, the fact that he has done the act, or granted the patent, is pi-ima facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, if laid before him, when the law has made such offi- cer the proper judge of their competency and sufficiency." Qear et al. v. Ch'osvenor et al., 1 Holmes, 215.— Sheplet, 1873. 17. " The decision of the Commissioner in re- j gard to the questions which liave been commit- j ted to his exclusive jurisdiction is final. His decision is conclusive in regard to the sufficiency i and competency of the formal acts and proofs I which the statute provides shall be a prerequisite to the issuing of a patent. His is, moreover, made the tribunal which is to decide both in re- gard to the existence of those facts upon which a reissue is to be granted, and upon which an extension of patents issued prior to March 2d, 1861, is to be made. By Section 32 of the act of 1870, he is to judge of the sufficiency of the reasons for delay, exceeding two years, in prose- cuting applications which shall thereafter be made. Upon these three subjects which are submitted to him, his decision is conclusive." U. 8. Rifle & Cartridge Co. et al. v. Whitney Arms Co. et al., 14 Blatch. 94.— Shipman, 1877. 18. " The decision of the Commissioner in re- gard to abandonment, upon renewed applications which were made under Section 35, has no higher authority or more enlarged scope than his decision upon the same question upon an original application. And ... all the defences which the statute authorizes may be made as well in respect to patents granted upon applications renewed after the act of 1870, as in respect to those issued upon original applications." — lb. 19. "It is to be presumed . . . that a high officer of a department of the Government will 80 COMPOSITION OP MATTEE. do his duty without compulsion or even com- mand from any quarter, especially where he has no interest nor the Government any except that the duty be done." Vt. Farm Mach. Co. V. Marble, 22Blatch. 128.— "Wheeler, 1884. 20. The Commissioner of Patents is " not an officer in whom, under the Constitution, judi- cial power can be vested." Odell et al. v. Stout et al., 29 O. G. 862.— Sage, 1884. 21. The official residence of the Commissioner of Patents is in the District of Columbia, and where it is sought to make him a party to a suit elsewhere proper service of process must be at- tained in some way. Butterworth, Com'r, v. Hill et al., 5 Sup. Ct. Rep. 796.— Sup. Ct. 1885. 22. " The Supreme Court has over and over again affirmed the principle that ' all questions of fact behind the patent are to be examined, heard, and conclusively determined by the Com- missioner of Patents. ' " Railway Register M'f'g Co. V. No. Hudson Co. R. R. Co. et al., 23 Fed. Rep. 593.— Nixon, 1885. COMPOSITION OP MATTER. Cases. 1. The ingredients of a composition may each and all be old and the composition be new and patentable. Ryan et al. v. Goodwin et al., 3 Sumner, 514.— Story, 1889. 2. The inventor of a new compound may properly specify substitutes for the different in- gredients and thereby cover their use in the com- pound. — Ih. 3. "Where the patent in question is for a new composition of metals a slight or immaterial change in the ingredients, or the manner of pre- paring them, makes no diflference, nor does a variation of proportions, nor the addition of other ingredients, make a substantial difference. Mattliewsy. Skates et al., 1 Pish. P. C. 602.— Jones, 1860. 4. " "Where a patent is granted for a composi- tion made of several ingredients it covers and embraces known equivalents of each of the in- gredients. An equivalent of any substance is another substance having similar properties and producing substantially the same effect. ' ' — lb. 5. "Where a patent for a composition of matter states the proportions of the ingredients used ap- proximately, in connection with such a statement us : " ' It is not intended to cotiflne the patent to the use of the ingredients specified, as those proportions may, in some cases, be advantage- ously varied. ' " " Exact conformity to these pro- portions is not required, because they are stated as approximate, and the right is claimed to vary them. But this right is not unlimited. It can only extend to any adjustinent of proportions which will result in the production of a sub- Stance possessing the peculiar properties attrib- uted to the substance dfescribed in the patent Substantial identity of result is the test of sub- stantial conformity to the mode of combination prescribed in the specification. '.' Francis et al. V. Melloret al., 8 Phil. 157.— McKennan, 1871. 6. Complainant's composition of matter, ac- cording to his specification, consisted of rubber, from 20 to 25 per cent ; gum-shellac, from 10 to 20 per cent ; Paris white, from 20 to 30 per cent ; French chalk, from 15 to 25 per cent ; litharge, from 11 to 18 per cent ; lamp-black, from 2 to 3 per cent ; sulphur, from 1 to 3 per cent. De- fendants' compound contained : rubber, 30.6 percent; plumbago, 40 per cent; copper and zinc, 14.6 per cent ; lead, 8.2 per cent ; sulphur, 6.6 per cent. Defendants were held to infringe. Jenhins v. Walker etal., 1 Holmes, 120. — Shep- LEY, 1872. 7. Complainant's invention related to the prep- aration and use of certain solvents of xyloidine. Bight different solvents were specified, among them camphor or camphor oil, or mixture of the same in conjunction with alcohol or spirits of wine, the same to be employed in about equal proportions. The claim was: " The preparation and use of solvents of xyloidine such as before described,'' etc. The court said :" Making use of the solvent power of camphor and alcohol when in the presence of each other and the xyloidine is the essence of the invention. The use of camphor and alcohol in about cqtial pro- portions is not of the essence of the invention." Spill V. Celluloid M'fg Co. , 18 Blatch. 190.— Blatchpord, 1880. 8. Complainant's improvement in bleaching xyloidine was stated thus : " I bleach it directly after the removal of the acids and before remov- ing it from the vat. This I do by any of the well-known means," etc. The claim was: " The process of bleaching xyloidine in the man- ner herein specified." The court said: "The real invention . . was to bleach xyloidine by ordinary bleaching agents directly after the con- verting acids had been washed out of it and be- fore anything had been mixed with it which might interfere. . . . "Whether the bleaching is done in the washing vat or not . . . are imma- terial matters. ' ' — lb. 9. The patentable novelty of an alloy consist- ing in the proportions in which the copper and tin were compounded and in the addition thereto, in the process of melting, of a prescribed quan- CONSTEUCTION OF PATENT— IN GENEEAL. 81 tity of arsenic, and defendant's metal being shown to be copper, tin, zinc, lead and arsenic copper ■within the range of proportion stated in the patent, and the tin and arsenic generally below the minimum proportion stated in the patent, defendant was held not to infringe. Kirh et al. V. ElMm M'fg & Gas Co., 19 Fed. Rep. 417. — MoKennan, 1884. CONGRESS. Cases. ' 1'. If a patent were held to imply a contract between the Government and the pebple, that the invention shall become public property at the expiration of the patent, yet Congress has power to pass laws violating contracts and to create a monopoly of the invention. Wvana V. Eato?i, 1 Peters' C. C. 333.— Wash. 1816. 3. Congress has power to give renewed pat- ents retroactive effect. Blanchard v. Spi-agv^, 2 Story, 164.— Story, 1839. 3. " The power of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and as there are no restraints on its exercise, there can be no limitation of their right to modify them at their pleasure, so they do not take away the rights of property in existing patents. " McCMurg et al. y . Kingsland et al., 1 Howard, 303.— Sup. Ct. 1843. 4. " Congress undoubtedly have power to pro- mote the progress of science and useful arts, by securing for limited times, to authors and in- ventors, the exclusive right to their respective writings and discoveries. " But it does not follow that Congress may, from time to time, us often ais they think proper, authorize an inventor to recall rights which he had granted to others, or reinvest in him rights of property which he had before conveyed for a valuable and fair consideration." Bloomer V. McQuewan et al., 14 Howard, 539. — Sup. Ct. 1853. 5. Congress has the right to compel distillers to affix certain meters to their stills, even though the effect may be to compel the distillers to purchase them of the patentee. Nausbaum V. Emery, 3 Bissell, 469.— Blodgbtt, 1878. 6. Congress has full power to grant a patent to an inventor, notwithstanding the existence of statutory obstacles ; but since " it has no right to deprive any person of his property without due form of law," it cannot, by granting such pat- ent, prevent persons already in possession of the embodied invention from using it. Page et al. v Eolmes Burglar Ala/rm Tel. Co., 17 Blatch. 484.— Blatchfokd, 1880. 7. " The right which the public has acquired to use the thing invented, by reason of the ap- plicant for a patent failing to do something pre- scribed by Congress, and the necessity for which Congress might, by previous legislation, have dispensed with, has never been held to be a vested right." Oraham. Adm'r, v. Johnston et al., 31 Fed. Rep. 40.— Mobbis, 1884. CONSTRUCTION OF PATENT- GENERAL. Cases. -IN 1. " If to an old machine some new combina- tion be added to produce new effects, the right is limited to the new. combinations. " WMtte- more et al.y. Cutter, 1 Gall. 478.— Stoby, 1813. 3. " The law should be construed favorably- and benignly in favor of patentees." ".Juries ought to look favorably on the right of pvop- erty." Whitney et al. v. Enmett et al., 1 Bald. 303. — HopKiNSON & Baldwin, 1831. 3. Patents are not to be treated as odious monopolies, nor to be construed with rigor. They are to be construed fairly, and not to be subjected to over-nice and ci'itical refinements. "When the nature and extent of the invention can be ascertained from the fair sense of the words used, rights are not to be frittered away on formal ob- jections. Ames V. Howard et al., 1 Sumner, 483.— Stoby, 1833. 4. " Patents are to be treated as a just reward to ingenious men ; as holding out encourage- ments to genius, talents, and enterprise ; as high- ly beneficial to the public ; as ultimately secur- ing great advantages to the whole community, and are to be liberally construed." Blanchard V. Sprague, 2 Story, 164. — Story, 1839. 5. A patentee fully described his machine, and then claimed as his invention "the method or mode of operation in the abstract, explained in the second article." Held not to be' a claim for a function, but for the machine. — lb. 6. Where in a combination patent one of the elements of the combination is described as hav- ing a certain construction, and that construction is a necessity of the purpose set forth, such con- struction will be deemed a material part of the combination, although not j)articularly specified in the claim. Eastman v. Bodfish, 1 Story, 538. —Story, 1841. 7. ' ' The end to be accomplished is not the subject of a patent The invention consists in the new and useful means of obtaining it." Carver v. Hyde et al., 16 Peters, 518.— Sup. Ct. 1843. 8. ' ' There is no magic in words, and, above ali 82 CONSTRirCTION OE PATENT— IN GENEEAL. In patents. The court looks through the whole patent and specification in order to ascertain what the thing claimed and patented is. " Ca/r- mr Y. Braintree M'fg Co., 3 Story, 433. — Story, 1843. 9. "In construing a patent for an invention, we are not to look alone to the descriptive words con- tained in the letters-patent, but we are to con- strue those words in connection with the speci- fication, which in our law is always annexed to and made apart of the letters-patent." Pitts 'v. Whitman, 3 Story, 609.— Story, 1843. 10. " This law gives a monopoly, but not in an ordinary sense. It takes nothing from the community at large, but it gives to them the greatest of benefits. Distinguished as many names have become in the different ages of the world, the names of Fulton and the inventor of the cotton-gin. with all intelligent men, will be placed' in the first rank of human benefactors. To remunerate inventors for ' time, ingenuity, and expense, ' the law gives to them the exclu- sive right of selling their invention for a limited period. "When we consider the inestimable ad- vantages which result to the world from the ' labor, ingenuity, and expense ' of inventors, so far from classing them with monopolizers, they should be regarded as public benefactors. And in order to secure to them the remuneration which the law provides, a liberal construction should be given to it." Broolcs et al. v. Jenkins etal., 3 McLean, 433.- McLean, 1844. 11. "The drawings are to be treated as part of the written specification, and may be referred to to show the nature and character and extent of the claim, as well as to compose a part of the description." WasTibum et al. v. Oould, 3 Story, 133.— Stoky, 1844. 13. " The jury are to judge of the meaning of words of art and technical phrases in commerce and manufactures, and of the surrounding cir- cumstances which may materially affect, enlarge, or contract the meaning of the words of the pat- ent and specifiction. ' ' — lb. 13. Where a kind of thing is mentioiied gen- erically in a claim, it may be construed to mean a specific kind of thing. Such a question is for the court, not for the jury. DavoU et al. V. Bro4n, 1 W. & M. 53.— 'Woodbuky, 1845. 14. "A liberal construction is to be given to a patent, and inventions sustained if practicable, without a departure from sound principles. Only thus can ingenuity and perseverance be encouraged to exert themselves in this way use- fully to the community ; and only in this way can we protect intellectual property, the labors of the mind, productions and interests as much a man's own, and as much the fruit of his hon- est industry, as the wheat he cultivates or the flocks he owns." — lb. 15. " The preamble, even, may be resorted to for ascertaining the object of the specification. . . . Sometimes the body of the specification, . . . sometimes the summing up, . . and sometimes the formal clause at the end of the specification. Generally all of them are ex- amined together unless the formal clause seems explicitly to exclude the rest, and require a de- cision on itself alone. ' ' — lb. 16. Specifications must be sustained if they can be fairly. —lb. 17. " We should not be astute to avoid inven- tions. ' ' — lb. 18. " The study of the courts has recently been, and especially since the patent acts of 1836 and 1839, to carry out the protection of the law to inventors so as to secure to them the full bene- fit of their inventions. ' ' — Sparkman et al. v. Hig- gins et al, 1 Blatch. 305.-Betts, 1846. 19. A part which is not mentioned in a claim may become a part thereof by construction given by the court. Hovey v. Stevens, 1 W. & M. 390. — WOODBUBY, 1846. 30. Although a , claim to the motion of a ma- chine may not be patentable, it may yet be con- strued to be for the parts of the machine. Hovey V. Stevens, 3 W. & M. 17.— Woodbuhy, 1846. 31. " When the patentee chooses to . . . cover with his patent the material of which a part of his machine is composed, he thereby endangers his right to prosecute when a different and in- ferior material is employed, and especially one which he himself, after repeated experiments, had abandoned." Aiken v. Bends, 3 W. & M. 348.— Woodbury, 1848. 33. "A court cannot consent to be over-astute in sustaining objections to patents. The true rule of construction in respect to patents and specifications, and the doings generally of invent- ors, is to apply to them plain and ordinarjr principles, . . and not in this most metaphys- ical branch of modern law, to yield to subtleties and technicalities unsuited to the subject and not in keeping with the liberal spirit of the age, and likely to prove ruinous to a class of the com- munity so inconsiderate and unskilled in busi- ness as men of genius and inventors usually are. " Eogg et al. v. Bmerson, 6 Howard, 437. — Sup. Ct. 1848. 33. When it is said that " a thing is substan- tially the same," it is meant that " it is the same in all Important particulars." Adams et al. V. Edwards etal, 1 Fish. P. 0. 1. — Woodbury, 1848. CONSTKUCTION OF PATENT— IN GBNEEAL. 83 S4. If defendant's macliine acts in obedience to the same laws as plaintiff's machine, and is guided by the same mechanical principle, then, although the mechanism may be changed, though the proportions may vary, though the two machines may differ in the extent to which the common purpose is accomplished, the defend- ant is an infringer. Parker v. Hulme, 7 West. L. J. 417. -Kane, 1849. 25. Although defendant's device may differ from that of complainant's, yet, "if these are only changes of form and proportions without introducing any new principle or mechanical power, or new mode of operation producing a new kind of a result, ' ' the defendant is an in- fringer. Many v. Siser et al., 1 Pish. P. C. 17. — Spkague, 1849. 26. A formal change on defendant's part will not distinguish his article from the patented thing. " That would be an evasion. The change must be substantial. It must be different in the mechanical structure, in the physical ex- istence' of the thing, and also in Its practical op- eration and effect in producing the result." Buck et al. v. Hermance, 1 Blatch. 398. — Nel- son, 1849. 27. " It is now a principle settled by the con- current opinions of some of the most enlightened jurists of this country, that patents securing to inventors the just rewards of their labor and in- dustry are to be construed liberally, and with a fair purpose of carrying out the object of the constitutional provision on this subject and the legislation of Congress based upon it. It is now justly held that these exclusive rights are not to be viewed in the light of odious monopolies, but as the result of a policy at once beneficent and wise." Parker v. Btiles, 5 McLean, 44. — Leavitt, 1849. 28. " It is . . well settled Ihat the whole in- strument — that is, the patent, embracing the specification and drawing— is to be taken to- gether ; and if, from this, ' the exact nature and extent of the claim made by the inventor can be perceived, the court is bound to adopt that in- terpretation, and to give it full effect.' " — JS. 29. The language used in the specification " is to be so received as consistently, with its fair im- port, ' will make the claim coextensive with the actual discovery. ' ' So that a patentee, un- less his language necessarily imports a claim to tilings in use, will be presumed not to intend to claim things which he must know to be in use. " —lb. 30. "In every, combination of mechanical de- vices to perform certain functions so as to con- stitute a new machine or a new and useful in- vention, it is impossible to enumerate, in a specification, all the various modes by which the machine may be made to operate^ so as to pro- duce a useful result. Many of its parts may be changed or substituted by other mechanical equivalents or devices, which either improve or deteriorate its value, while the original idea, principle, or mode of operation of the inventor is manifestly preserved. The inventor usually sets forth what he conceives the best form or mode under which his machine may be used to produce the required result. In order to ascertain tue true nature and value of his invention, we must separate the substance and principle of it from its accidents ; its essence from its modes ; a mere change in the latter, while the former are retained, will not acquit the party making it from the charge of guilt of pirating the inven- tion." Blanchard v. Beeves et al., 1 Pish. P. C. IOB.-Griek, 1850. 31. " Patents should be construed liberally to support the claims of meritorious inventors. But there may be a liberality of construction very injurious to the public, especially if it per- mits the patentee to couch his specification in such ambiguous terms that its claims may be contracted or expanded to suit the exigency." Parker v. Sears etal., 1 Pish. P. C. 93. — Gmer, 1850. 32. " It would amount to an infringement of such an invention as Morse's, or the patent for it, to adopt his mode of acting, operating, etc., or merely to change it by substituting some me- chanical equivalent in a part of it, or altering only the form and proportion, so as not materi- ally to affect results, or making any change merely evasive, colorable, and not ' substantial ' or ' considerable ' in its character. But one ma- chine or manufacture is not a violation of an- other, within the purview of the patent system, unless it is substantially the same. It need not be identical, but it must be similar in the princi- ple or mode of operation." Smith v. Downing et al. , 1 Pish. P. C. 64.— Woodbury, 1850. 33. Where complainant's device cannot be made to do that which is done by defendant's device, it would seem that the two are not equiv- alents, and that defendant does not infringe. — n. 34. " If [an inventor] has discovered much and discloses little — if there has been revealed to him one of the arcar.a of nature, and he com- municates to the world only one or more of its derivative and secondary truths, he patents no more than he has proclaimed. He will not be allowed afterward, when the extent of his right shall be the subject of controversy, either by ex- 84 CONSTEUOTION OP PATENT— IN GENEEAL. panding into a general expression what was limited before in a particular form, or, by trac- ing out for us the line that leads back from con- sequence to remote causes, to initiate us, infer- entially, into the radical mystery of his inven- tion, and then argue that he had described it by implication from the first, and has claimed ownership of it in his patent." Detmold V. Beeves et al., 4 Am. L. J. 188. — Kane, 1851. 35. " There is no doubt that he who has dis- covered some new element or property of mat- ter may secure to himself the ownership of his discovery so soon as he has been able to illus- trate it practically, and to demonstrate its value. His patent, in such a case, will be commensu- rate with the principle which it announces to the world, and may be as broad as the mental con- ception itself. But, then, the mental conception must have been susceptible of embodiment, and must have been, in fact, embodied in some me- chanical device or some process of art. The abstract must have been resolved into the con- crete. The patent must be for a thing — not for an idea merely. ' ' — Ih. 36. " The one who patents an invention first is entitled to the protection of the principle in it over everybody else that patents it afterward. " Colt V. Mass. Arms Co., 1 Fish. P. C. 108.— ■WOODBTJKY, 1851. 37. ' ' Where the difference is only in form or proportion to bring about similar results, or where it is only by using a mechanical equiva- lent instead of what is used by the other, there is, in point of law, not that considerable differ- ence in principle, or in operation, or in results, which the law holds not to be a violation of what preceded it ; but if it differs in something beyond mechanical equivalents — if it differs in something beyond form and proportions — if the difference in the parts of a pistol where it is charged is very considerable — the plaintiff can- not claim that as similar to his." — lb. 38. " The claim must be construed to mean the words which he points out for his opera- tions, and not any and all words. It is true that the operation of the law is such that any mode which is equivalent to the one he points out— which is similar — is covered by his patent, when he claims a particular mode ; but in his patent he claims only what he points out, and that covers all which are similar and analogous, or which vary only in form." — 11. 39. It is a presumption of law that the patentee has knowledge of the prior art. Foote v. Silsby et al., 2 Blatch. 260.— Nelson, 1851. 40. " To substitute in place of some one ele- ment of a composition of matter a mere known equivalent is an infringement, because, although the patentee has not expressly mentioned such equivalent in his claim, he is understood to em- brace it, and in contemplation of law he has em- braced it without express mention of it. " Byam et al. V. Farr et al., 1 Curtis's C. C. 260.— CuKTis, 1852. 41. "The claim must be taken as it stands, whatever is mentioned in it. ' ' — Ih. 42. "A patentee is not confined to the precise arrangement, in the construction of his machine, which he has described in his patent. . . . Formal changes are nothing — mere mechanical changes are nothing — all these may be made outside of the description to be found in the pat- ent ; and yet the machine, after it has been thus changed in its construction, is still the machine of the patentee, because it contains his inven- tion, the fruits of his mind, and embodies the disfcovery which he has brought into existence and put into practical operation. ' ' Tatliam et al. V. Le Boy et al., 3 Blatch. 474. — Nelson, 1852. 43. " Any change or alteration which is sug- gested to the skilful operator from the working of the machine and in the course of its operation — any useful change that maybe the result of the practical working of the machine — is clearly a change that belongs not to the operator, but to the original inventor of the improvement." — lb. 44. "In examining a machine, with a view to ascertain whether or not it is an infringement of a previous one, the similarity or dissimilarity of the mechanical construction is not necessarily controlling. Its structure may be apparently very similar in form, and yet its principle and operation and result may be very different. So, on the other hand, its structure and appearance may be very different to the eye and in point of fact, and yet it may, in reality and in principle, be the same as the previous machine. " "The sure test, and the one the Jury should be guided by in all cases of this kind, is whether or not the defendants' machine, ' whatever may be its form or mechanical construction, has incorpo- rated within it the principle or the combination or the novel ideas which constitute the improve- ment to be found in the plaintiff's machine. If it does, no matter what may be its mechanical construction or its form, it is an infringement, an appropriation of the ideas of another, simply in a different form." BlaneJiard V. Beers et al, 3 Blatch. 411.— Nelson, 1853. 45. After a chemical discovery has been made and patented, it is easy to find chemicals of differ- ent namfis which will answer the purpose of the invention ; but the use thereof is an infringe- CONSTEUOTION OP PATENT— IX GENERAL. 85 ment. Goodyear et al. v. Central S. JR. of New Jersey, 2 Wall. Jr. 356.— Gbier, 1853. 46. " Patents are granted to ' promote science and the useful arts. ' They are not odious mo- nopolies or restrictions on the rights of the pub- lic. For the temporary monopoly given to the inventor, the public receive full compensation by the publication of the invention. And when the specification of a patent honestly sets forth the process and mode of compounding a new and valuable composition of matter, courts are bound to give it a liberal construction, and not to fritter it away or annul its benefits by formal or subtle objections."— J J. 47. " The extent of the patentee's rights must be judged from the whole instrument taken to- gether,- and not from any one sentence." — 75. 48. "When the subject-matter of the patent is a manufacture, the question will be whether in reality and in substance the defendant has availed himself of the invention of the patentee ; a mere colorable evasion in the process or appli- cation should not be allowed to protect a defend- ant." Rich et al. v. Lippincott et al., 2 Fish. P. C' 1.— Greek, 1833. 49. " The patent embraces nothing more than the improvement described and claimed as new, and . . any one who afterward discovered a method of accomplishing the same object, sub- stantially and essentially differing from the one described, had a right to use it. " O'Reilly et al. V. Morse et al., 15 Howard, 62. — Sup. Ct. 1853. 50. " The claim or summing up is not to be taken alone, but in connection with the specifi- cation and drawings. The whole instrument is to be taken together." And the court is to ' ' look at the others only for the purpose of en- abling" it "to correctly interpret the claim." Brooks et al. v. Fiske etal., 15 Howard, 212. — Sup. Ct. 1853. 51. Where a patentee " has stated his claim in rather ambiguous and equivocal terms which might be construed to mean either a process or machine," in such case the construction should be that which is most' favorable to the patentee, " ut res magis valeat quam per eat." Corning et al. V. Burden, 15 Howard, 252. — Sup. Ct. 1853. 52. " Now while it is undoubtedly true that the patentee may so restrict his claim as to cover less than what he invented, or may limit it to one particular form of machine, ex- cluding all other forms, though they also em- body his invention, yet such an interpretation should not be put upon his claim if it can fairly be construed otherwise, and this for two rea- sons : "1st. Because the reasonable presumption is that, having a right to cover and protect his whole invention, he intended to do so. " 2d. Because specifications are to be construed liberally, in accordance with the design of the Constitution and the Patent Laws of the United States, to promote the progress of the useful arts, and allow inventors to retain for their own use, not anything which is matter of common right, but what they themselves have created." Winans-^. Denmead et al., 15 Howard, 830. — Sup. Ct. 1853. 53. " When a patentee describes a machine and then claims it as described, ... he is un- derstood to intend to claim, and does by law actually cover, not only the precise form he has described, but all other forms which embody his invention ; it being a familiar rule that to copy the principle or mode of operation describ- ed is an infringement, although such copy should be totally unlike the original in form and pro- portion." — lb. 54. "Where form and substance are insepa- rable, it is enough to look at the form only. Where they are separable, where the whole substance of the invention may be copied in a different form, it is the duty of courts and juries to look through the form for the substance of the invention, for that which entitled the invent- or to his patent, and which the patent was de- signed to secure. Where that is found there is an infringement, and it is not a defence that it is embodied in a form not described and in terms claimed by the patentee. ' ' — lb. 55. " Patentees sometimes add to their claims an express declaration to the effect that the claim extends to the thing patented, however its form or proportions may be varied. But this is un- necessary. The law so interprets the claim with- out the addition of these words. The exclusive right to the thing patented is not secured if the public are at liberty to make substantial copies of it, varying its form or proportions. And, therefore, the patentee, having described his invention and shown its principles, and claimed it in that form which most perfectly embodies it, is in contemplation of law deemed to claim every form in which his invention may be copied, unless he manifests an intention to dis- claim some of those forms." — lb. 56. " The patentee may . . limit his claim in his specification to one particular form of machine, and thus exclude all other forms which embody his invention, and thereby not secure himself the whole that he has invented. In such 86 CONSTEUCTION OF PATENT— IN GENERAL. a case he is secured only in the particular form claimed." Am. Pin Co. v. Oakville Co. et al., 8 Blatch. 190.— Ingkbsoll, 1854. 57. " The claims contained in a patent are to he construed with reference to the state of the art at the time of the invention." Pitts V. Wemple, 1 Bissell, 87. — Drtimmond, 1855. 58. A patentee is restricted to his claim. " It is true that the whole patent, including speciii- cations and drawings, is to be taken into con- sideration, but . . . only for the purpose of placing a proper construction upon the claim. ' ' —lb. 59. The question is not whether defendant's macliine operates as perfectly as plaintiff's, " but whether it is the same in principle or not. And by the principle of a machine or improve- ment of a machine . . is to be understood the peculiar mode, manner, or device by which a proposed result or effect is produced." — lb. 60. " The words of the specification are to be taken together, and they are to be so construed as to give effect to the meaning and intention of the person using them. Words are not to be distorted from their meaning so as to affect what may be supposed to have been the intention of the person using them. But they are to have a reasonable construction, as connected with the sentence in which they are used." Allen v. Hunter, 6 McLean, 303.— McLean, 1855. 61. " Formerly a strict construction was given in this country and in England to the claims of a patentee, but a more liberal and favorable view is now taken of his claim. He must de- scribe it within the law ; but courts do not go beyond the law for technical objection to defeat it."— /J. 63. " An unsubstantial or colorable alteration in a machine or compound does not protect an individual from the character and consequences of an infringement. Where the machine is con- structed or the compound formed on. the same principle, however varied in form, there is an infringement. In a machine where the same powers are employed, with only formal altera- tions as to size or position of the machinery, to produce a certain result, the principle of the machine remains the same. And so of a com- pound where the ingredients are the same and the change is merely in the mode of combining them ; or where there is a substitute of one ingredient, having the same quality and pro- ducing the same result, being within the scope of the claim. ' ' — lb. 63. "There is a reasonable presumption that it is the intention of the inventor to obtain, and of the Government to cohcede to him, the ex- clusive right to what he actually invented." Kittle V. Merriam, 2 Curtis's 0. C. 475.— Cub- TiB, 1855. 64. ' ' The first and original inventor is entitled to protection against all other means of carry- ing the principle into effect." Nichols y. Har- ris, 1 MacArthur's P. C. 362.— Moksell, 1855. 65. A claim was for " the employment of a column of falling water, ' ' etc. The court con- strued this to be a claim for certain mechanism, saying: "It is the duty of the court, in con- struing claims of this character, to so construe them, if they can without doing violence to the language used, as not to defeat the claim of the patentee, but to give the plaintiff what he has actually invented, and to give him all that he has actually invented ; in other words, to make the claim commensurate with the Invention which has been actually made by the patentee. " Ransom et al. v. New Tm-k, 1 Fish. P. C. 253. —Hall, 1856. 66. "The patentee is to be presumed not to intend to claim things which he must know to bo in use ; . . the specification should be so read as will make the claim coextensive with the actual discovery or invention." Winter- mute V. Redington, 1 Fish. P. C. 239. — Wilson, " 1856. 67. " When a person has invented some mode of carrying into effect a law of natural science or a rule of practice which constitutes the pe- culiar feature of liis invention, such discovery may be secured to him by a patent. Hence it follows that he is entitled to protect himself from all other modes of making the same appli- cation. The substantial identity, therefore, that is to be looked to respects that which constitutes the essence of the invention — namely, the applica- tion of the principle. If the mode of carrying the same principle into effect, adopted by the de- fendant, still shows that the principle admits of the same application in a variety of forms or by a variety of apparatus, the jury will be au- thorized to treat such mode as a piracy of the invention. But if the defendant has adopted variations which show that the application of the principle is varied, that some other law or rule of practice or science is made to take the place of that which the patentee claims as the essence of his invention, then there is no in- fringement. ' ' — lb. 68. Upon the question of infringement, the question as regards complainant's patent is what he has claimed, not what he might have claimed. Sickles et al. v. Gloucester M'fg Co., 3 Wall. Jr. 196.— Gkier, 1856. 69. " The title or description given to the in- CONSTKUCTION OF PATENT— IN GBNEKAL. 87 vention in the grant Is never expected to be specific, but only to indicate the nature and de- sign of the invention. The specification, as its name indicates, must be searclied for the exact description of what the patent claims." — lb. 70. By the " principle" of a machine is meant the " modus operandi." — lb. 71. " The law requires a clear and particular specification of the principle and several modes in which the patentee contemplates its applica- tion. Courts will always construe these instru- ments favorably to the patentee ; but they can- not make a new specification with more exten- . sive claims than the original, or stop the course of invention by a fanciful application of the doctrine of equivalents." —lb. 73. "The new form of the machinery em- bodying the new ideas is not a material part of the patentee's invention, for the reason that the embodiment of his ideas into working machin- ery is rather the work of a skilful mechanic than that of the inventor." " The mere form of the defendants' machinery must be disregarded, and the jury must look into the substance of its arrangement and its method of working for the purpose of seeing whether the ideas of the inventor are incorporated in it. If they are, the patent is infringed. " Sickles v. Borden, 3 Blatch. 535.— Nelson, 1856. 73. In discussing the operation of the patent- ed machine, " it is not material what the theory of the patentee was on this point." Foss etal. v. Herbert, 1 Bissell, 121.— Dktjmmond, 1856. 74. ' ' In the construction of a patent, the en- tire specification is to be taken together, as em- bracing the particular description which the law requires of the discovery, the manner of con- struction, and the claim of the patentee. The specification and claim emanate from the same pen — the one cannot contradict the other." PajsY. Ferry, 1 Fish. P. C. 298.— Wilkins, 1857. 75. "The intention of the inventor, so as to effect the object designed, is to govern the con- struction of the language he employs. Invent- ors are not always educated or scientific men. Some of the most useful inventions have sprung from an illiterate source. Genius is not always blessed with the power of language. Courts look to the manifest design in order to remove any ambiguity arising from the terms employed. But this ambiguity must not be such as would perplex an ordinary mechanic in the art to which it applies. ' ' — lb. 76. Courts use the phrase, " ' Substantial identity,' as excluding immaterial variations or fraudulent evasions. That is a substantial identity, which comprehends the application of the principle of the invention. " If a defendant adopts a different mode of car- rying the same principle into effect, and the principle admits of a variety of forms, there is an identity of principle, though not an identity of mode. " — lb. 77. "A patent, in calling for a specific mode, embraces in law all mechanical equivalents or modes which operate on the same principle ; con- sequently all modes, however changed in form, but which act substantially on the same principle and effect the same end, are within the patent. If this were not so a patent right would be of no value, as it might be avoided by any one who possessed ordinary mechanical skill." Pitts V. Edmonds et al., 1 Bissell, U. S. C. 168.— Mc- Lbak, 1857. 78. "The invention patented when a patent is taken out for a machine is the machine itself — the mechanical means and devices by which certain results in the operation of the machine can be obtained ; and when the inventor has ob- tained a patent for his invention, he is entitled to the exclusive use of it, if that invention is a machine, for all the uses and purposes to which that machine, without the exercise of any in- ventive power, can be usefully applied. In other words, when he patents a machine he cannot patent either a purpose or an effect, but the me- chanical means, devices, and organization which his machine embodies ; and when these means, devices, and organizition are patented, the pat- entee is entitled to the exclusive use of this me- chanical organization, device, or means, for all the uses and purposes to which it can be applied, to every function, power, and capacity of his patented machine, without regard to the pur- poses to which he supposed originally it was mo.st applicable, or to which he supposed it was solely applicable, if such were hisariginal view. " Conover v. Roach et al., 4 Fish. P. C. 12. — Hall, 1857. 79. "A mere change of form in the element- ary parts of a combination, or in the different parts of a machine which is patented, does not change the character and principle of the ma- chine, provided the spirit, substance, and princi- ple of the machine is retained, and . the substitution of. one well-known mechanical equivalent for another is not such a change as will alter the character of the machine or shield infringers from the consequences.of an infringe- ment. " — lb. 80. An " attempt to treat the- earlier and bet- ter device used by defendant as an infringement of a later device, to obviate a difficulty unknown 88 CONSTRUCTION OF PATENT- IN GENERAL. to the first, is an application of the doctrine of equivalents which needs no . . comment." McGormiokY. Talcott et aX., 20 Howard, 403. — Sup. Ct. 1857. 81. "Patents are to be construed liberally; . . . they are not to be subjected to a rigid in- terpretatioi^, and ... it is to be presumed that the Commissioner has done his duty, and not granted a patent when he ought not to have granted one. ' ' Potter et al. v. Holland, 4 Blatch. 238.— Inqbrsoll, 1858. 83. " The plaintifE is not controlled by his ti- tle, but the patent, specification, and drawings are all to be examined, and are all to have a fair and liberal coflttruction in determining the nature and extent of the invention." Bell V. Daniels et al., 1 Bond, 212. — Leavitt, 1858. 83. " In determining what it is that the plain- tiff has secured to him by his patent from the Government, the court looks, in the first place, at what is called technically the claim, which is the summing up, at the close of the patent, or specification preceding ; the claim being in the terms : ' What I claim to have invented, and wish to secure by letters-patent, is — ' and then a condensed statement of what he wishes to have secured to him by his patent. But in constru- ing that, we take into view the whole of what precedes it in the specification, and also such extraneous facts presented by the evidence as may aid in giving the true construction to the patent, particiilarly the documents from the Patent Office which have preceded the granting of -the patent itself.'' Johnson y: Root, 1 Fish. P. C. 851.— Sprague, 1858. 84. ' ' Patents are to be construed liberally, and are not to be subject to a strict and rigid inter- pretation. The rights secured are to be pro- tected against any substantial violation. Formal and subtle differences are to be disregarded." Imlay v. Norwich & Worcester i?. JJ. , 4 Blatch. 337.— Inqbrsoll, 1858. 85. " Patents are to be liberally construed ; . . . they should not be subjected to too rigid an interpretation. That is a rule of law, and if it were not a rule of law, and not regarded, but very few patents would be of any avail. ' ' Wa- terbury Brass Co. v. N. Y. & Brooklyn Brass Co., 3 Fish. P. C. 43.— Inqbrsoll, 1858. 86. If there is a question about the construc- ,tion of a claim, the other parts of the specifica- tion are to be used in understanding the claim. Whipple V. Baldwin M'fg Co., 4 Fish. P. C. 29.— Sprague, 1858. 87. " Defendant may lawfully produce the like result with the plaintiffs if he uses means substantially different from those described in the plaintiff's specification. Results are not pat- ented, but only means to produce results." Burr et al. V. Copperthwait, 4 Blatch. 163.— Ingbr- soLL, 1858. 88. " All exclusive rights in the nature of pat- ents are created, and must be controlled by statu- tory provisions, and, therefore, it must appear that all the essential requisites of the law have been complied with. In deciding this question, we must look to the patent, specification, and drawings, and these are to be examined and construed in a liberal spirit. It is sometimes said that all patents are monopolies, grants of • exclusive privileges whjch ought not to be main- tained. . . This view is not to be counte- nanced ; . . the patent should be construed liberally, and the patentee should be protected in all rights which fairly belong to him." Lat- ta V. Shawh, 1 Bond, 359,— Leavitt, 1859. 89. " On the question of identity, the law re- gards substance and not form, and the real ques- tion is, whether the machine used by defendants is in principle the same as that patented to the plaintiff. It would be a reproach to the law if a mere colorable change could deprive an in- ventor of the merit of his invention. By the term, ' Principle of a machine, ' we understand its mode or manner of operation, and hence there may be two structures widely different in ap- pearance or dimensions, and yet identically the same in principle." — lb. 90. " Difference in size and proportions, so long as the construction, arrangement, principle, and mode of operation are substantially the same, is entirely immaterial. Any machine got- ten up by the patentee or those claiming under him whose construction, arrangement, princi- ple, and mode of operation are substantially the same as the one described in the specification, though differing in size and proportions, is as much within the protection of the patent as the structure therein described, provided it is of sufficient siae and has the proper proportions to accomplish the requisite work, and actually accomplishes it, substantially by the same means and substantially in the same way. ' ' Cahoon et al. V. Ring, 1 Cliff. 593.— Clippokd, 1859. 91. "If two machines do the same work in substantially the same way, and accomplish sub- stantially the same result, they are the same ; and so' if parts of two machines do the same way, and accomplish substantially the same result, those parts are the same, although they may differ in name, form, or shape ; but, in both cases, if the two things perform different work, or in a way substantially different, or do not accomplish shb- CONSTRUCTION OF PATENT— IN GENERAL. 89 stantially the same result, then they are substan- tially different. ' ' Slight differences in degree cannot be regard- ed as of weight in determining a question of sub- stantial similarity or substantial difference. One thing may be a little longer or a little shorter than another, or it may work a little better or a little worse, and yet the two may be substantial- ly the same ; and whether they are so or not, and whether the difference in degree is sufficient to constitute a substantial difference in the thing or not, are questions for . . determination. Mere difference in degree, however, when prop- erly applied to the facts of the case in comparing these machines, or the several devices or ele- ments of which they are composed, is entitled to very little weight. " — lb. 93. "It is the duty of the court to give" a patent " such a liberal construction as will se- cure to the inventor an exclusive right to his in- vention and discovery, as stated and described in the specification." — PikeY. Potter, 3 Fish. P. C. 55.— Pitman, 1859. 93. " If, by examination of the specification, and applying to the then existing state of the art, we can learn what the invention was, then the claim, which was designed to be a condensed summary of the invention, is to be construed so as to be coextensiye with the invention, if that can be done without doing violence to its lan- guage. " Whipple V. Middlesex Co., 4 Fish. P. C. 41.— Sprague, 1859. .94. " In giving a construction to the plaintiff's patent, we are to ascertain what he intended. ' ' —lb. 95. The idea involved in an invention may be such that, after the original completion, a skil- ful mechanic might, by mere skill and without the use of any inventive faculty, embody it and adapt it to practical uss by different mechanical devices. All such adaptions would be infringe- ments of the patent granted for the invention. Potter et al. v. Wilson et al., 2 Fish. P. C. 103.— Nelson, 1860. 96. " The law is that the patentee is protected against any other device which involves sub- stantially the same principle. But if another party produces the same result by means differ- ent in application and principle, then it is no Infringement, for it would be absurd to say that the granting of a patent covers all possible ways of producing the same result." Lee et al. V. Blatidy et al., 1 Bond, 361.— Lbavitt, 1860. 97. Where the patent in question is for a new composition of metals, a slight, immaterial change in the ingredients or in the manner of preparing them makes no difference, nor does a variation of .proportions, nor the addition of other ingredients, make a substantial difference. Matthews v. Skates et al., 1 Fish. P. C. 602.— Jones, 1860. 98. " In giving construction to a claim, we must look at the specification which precedes it." Howe V. Morton et al, 13 Mo. L. E. 70.— Sprague, 1860. 99. " If a party is not the original inventor of the principle as well as of the machine, he has no right to invoke the doctrine of equivalents, for it does not belong to him ; but if he is the inventor of the principle which he embodies in his machine, as well as the first inventor of the machine which carries it out, he has a right to invoke the doctrine of equivalents." Singer et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 100. " Where there was anything inconsistent either in the specification or in the claim, and yet the patent claimed in substance that which was patentable, the courts have always decided that that was the meaning of the claim ; as, for instance, in the case where a party described a machine, and yet claimed a function,' the court decided there that the patent was good for the machine. But the courts have never gone so far . . upon that principle of the liberal con- struction of patents, nor could they have done so as to say that a party, having claimed that which was not patentable, his patent could stand. ' ' — 1 b. 101. " Where a party has discovered a result, as well as the machinery which produces it, he has a right to invoke the doctrine of equivalents in reference to infringers. Where he has dis- covered a function that is new for the first time, and discovers a machine that is new, too, he has a right to invoke the doctrine of equivalents to protect himself." — lb. 103. If "the mechanism or 'Combination of mechanism used by defendants varies from that prescribed in plaintiff's patent only in immaterial respects, or by the substitution of other known equivalent mechanical powers for those men- tioned in plaintiff's specification, then the de- fendants have infringed the patent or' patents of the said plaintiffs." — lb. 103. " In comparing the machines of the de- fendants with the inventions of the plaintiff, the mere change in form of machinery, or an altera- tion of some one of its inessential parts, or in the use of known equivalent powers, not varying essentially the machine or device, or its mode of operation or organization, will not make the de- fendants' machine or device invention." — lb. 104. Ip deciding the question of infringement, identity does not depend upon form and propor- 90 CONSTEUCTION OF PATENT— IN GENEEAL. tions so much as upon the principle of action and the operation of the two things. Judson V. Moore et al., 1 Bond, 385. — Leavitt, 1860. 105. " Courts should be very tender of the rights of inventors, and not draw hasty conclu- sions adverse to the validity of their rights se- cured by patent." Tappan v. National Bank- Note Co., 4 Blatch. 509.— Ship^an, 1861. ■ 106. It is the qualities which an article has, and not those which are imputed to it in the specification, which govern. Qoodyear et al. v. N. Y. Qutta FercTia & India Rubber Vulcanite Co. etal., 3 Pish. P. C. 313.— Nblson, 1863. 107. "Patents for inventions are not to be treated as mere monopolies, and, therefore, odious in the eyes of the law ; but they are to receive a liberal construction, and under the fair application of the rule ut res ma{iis iialeat quam pereat are, if practicable, to be so interpreted as lo uphold and not to destroy the right of the in- ventor. " Turrill v. Michigan Southern M. H. Co.. 1 Wall. 491.— Sdp. Ct. 1863. 108. "An infringement involves substantial ide'ntity, whether that identity be described by the terms, ' same principle, ' ' same modus oper- andi, ' or any other. It is a copy of the thing described in the specification of the patentee, either without variation or with such variations as are consistent with its being in substance the same thing. If the invention of the patentee be a machine, it will be infringed by a machine which incorporates in its structure and operation the substance of the invention — that is, by an arrangement of the mechanism which performs the same service or produces the same effect in the same way, or substantially the same v/ay. " Burr v. Buryee, 1 Wall. 531. — Sdp. Ct. 1868. 109. " Although several inventors might ob- tain substantially the same result if it was ob- tained by means substantially different in char- acter, construction, arrangement, and mode of operation from any prior invention adapted to the same general purpose, the use of such means for a similar, or even for the same purpose, would not infringe the rights of a prior patentee. The patentee of the first of such inventions could not treat another as an infringer because he had im- proved the machine of . . . any other prior in- ventor by the use of a substantially different device, or a substantially different combination of parts, though such device or combination were capable of performing the same functions. In such cases, the inventor of the first improvement cannot invoke the doctrine of equivalents to sup- press the other improvements, which are not mere colorable evasions of the first. " Burden y. Corn- ing et al., 2 Fish. P. C. 477.— Nelson & Hall, 1864. 110. " The claim must be construed as favor- ably to the plaintiff as the language of the claim, the state of the art, and the extent and character of his actual invention will allow. "^JS. 111. Where a patentee is simply an improver on a prior existing machine, the construction of his claim is to be limited to the specific device he describes and claims and to equivalents there- of, meaning by equivalents not equivalents in results, but equivalents in means. — lb. 113. In construing a patent, the same mode is to be followed in determining upon an in- fringement that was followed in determining upon patentable novelty. — lb. 113. " Duty of the court is to collect the in- tention of the parties from the whole instrument, and, if practicable, to adopt such construction as will give it effect and render it available for the purpose for which it was granted." Qoodyear et al. V. Providence Rubber Co. 'et al., 3 Cliff. 351. — Clifford, 1864. 114. "Every inventor is entitled to the full benefit of his invention as described and secured in his patent, and no one charged with infring- ing the same can successfully defend himself against the charge merely because the machine he makes, uses, or vends differs from that of the plaintiff in form, or in any respect which does not render the machine so made, used; or vended substantially different from the patent- ed machine." Union Sugar Refinery v. Mat- thiessen, 3 Fish. P. C. 600.— Clifford, 1865. 115. "Patentees have that property in their inventions as secured by letters-patent, and they have no other ; and hence it is that courts of justice have uniformly held that patents for in- ventions are not to be treated as mere monopo- lies, and therefore odious in the eye of the law, but they are to receive a liberal construction, and, if practicable, are to be so interpreted as to uphold and not to destroy the rights of the in- ventor. " — lb. 116. Where the elements of an invention are old, the rule " undoubtedly is that the patentee cannot invoke the doctrine of equivalents to sup- press all other improvements of the old machine, but he is entitled to treat every one as an in- fringer who makes, uses, or vends his patented imiDrovement without any other change than the employment of a substitute for one of its ele- ments, well known as such at the date of his invention, and which any constructor acquainted with the art knew how to employ. Reason for the qualification of the rule as stated is, that such a change— that is, the mere substitution of a well- CONSTRUCTION OF PATENT— IN GENERAL. 91 known element for another, where it appears I that the substituted clement was well known as a usual substitute for the element left out— is a merely formal one, and nothing better than a colorable evasion of the patent." — lb. 117. Where the elements of an invention are old, "the patentee cannot invoke the doctrine of equivalents to suppress all other improve- ments of the old apparatus or machine, but he is entitled to treat every one as an infringer who makes, uses, or vends his patented improvement vnthout any other change than a common sub- stitute for one of its elements, well known as such, and which any constructor, without any experiment or resort to invention, knew how to employ." — lb. 118. It is the duty of the court " to construe the patent in such a way, if possible, as to conform to the actual invention." Hale et al. V. Stimpson et al., 2 Fish. P. C. 565. — Loweli,, 1865. 119. " There always is, in the mind of the court, a desire to sustain a patent securing an invention upon as broad a construction as is consistent with the rules which must determine the court in the construction of an instrument of this kind." Doughty v. West etal., 3 Fish. P. C. 553.— Shipman, 1865. 120. " The general rule on the subject is, that patents are to be so construed, if possible, that the inventor shall have the benefit of what he has actually invented, if he has invented any- thing ; and that is a rule which is beneficially ap- plied to the advantage, undoubtedly, of paten- tees. " Woodman v. Stimpson, 3 Fish. P. C. 98. — Lowell, 1866. 131. " The man who has made the first in- vention has made it for all uses to which it is applicable. ' ' — lb. 133. It seems that, in construing a patent, the inventor's previous caveat may be taken into consideration. Goodyear et al. v. Mullee et al., 5 Blatch. 439.— Blatchfokd, 1867. 133. " There is one principle true, beyond all question, that a patent for a particular structure, intended to accomplish a particular end, does not necessarily import an exclusive right to every possible mode of accomplishing the same end. ' ' Blanehard et al. v. Puttman et al., 3 Bond, 85. — Lbavitt, 1867. 134. " If, by the use of good sense and the ordinary rules of interpretation, the court can clearly see the nature and limits of the inven- tion, the claim will be upheld. If it is so am- biguous and uncertain that its true meaning can- not be made out without resorting to conjecture, or if it includes that which is old and therefore not within the power of the patentee rightfully to claim, then the patent is void." Blake V. Stafford, 6 Blatch. 195. —Shipman, 1867. 135. " Where the patent is brought to the test of a litigation, ambiguity, or excess in the speci- fication and claim, is to be determined by con- struction, and the instrument must stand or fall under this test." — Ih. 136. " It might be said that, if a fraudulent in- tent to make the specification or claim obscure were proved by extrinsic evidence, the court ought not to give the patentee the benefit of the liberal rule of construction which prevails in favor of inventors. But this rule of construction rests upon the public policy, and not upon cases of individual merit. Its application to the in- strument is necessary before it can be determined whether or not the alleged defect exists." — lb. 137. "It is a settled rule in the construction of patents that the specification is to be liberally construed, and effect, if possible, is to be given to the claims of the patentee, so as to give him all the benefits of his invention." Whitney V. Mowry, 3 Bond, 45. — Lbavitt, 1867. 138. " It is a conceded principle that a patent for a mechanical structure, or a process to effect a specific purpose, does not embrace every pos- sible means of effecting the same result. The true inquiry is, whether the machine or process charged to be an evasion of an exclusive right of a patentee embodies the idea or conception of the original inventor, and accomplishes it by substantially the same means. A patentee is protected from the use of all plans or devices which, however seemingly different from the patented invention, are the same in principle and operation."— 7S. 139. " It is well settled by the courts that, in the effort to ascertain the intention and meaning of the specification and claims, they are to be viewed in a liberal spirit ; that, if possible, the object of the inventor or patentee may be carried out. Mere rigid technicalities are to be set aside, unless there is clear legal necessity for sustain- ing them." Goodyear etal. v. Berry, 3 Bond, 189.— Lbavitt, 1868. 130. " A patent for a mechanical structure or contrivance, producing a new and useful result, is no protection against the use of an invention producing the same result by appliances or principles substantially different from the pat- ented invention. The rights of the patentee or proprietor of the patent are only invaded by a result like that of his invention, effected by what are substantially the same means. And so in the case of patented chemical combinations, the exclusive right to the invention imports noth- 92 cOiSrsTKUOTioisr op patent— in geneeal. ing but protection against the use of the same, or substantially the same, elements compounded and treated on principles substantially the same as those of the patented article. ' ' — lb. 131. " An infringement is a copy made after and agreeing substantially and in principle with the article described in the letters-patent." Haselden v. Ogden, 3 Fish. P. C. 378.— Shbe- MAN, 1868. 133. ' ' In construing a patent, in the first place, courts generally look to the claim, which, by law, is required to be a summing up of the particulars of the invention for which the ap- plicant desires a patent. If that claim is vague and uncertain, then reference is made to the pro- ceedings, specifications, and drawings, together with such other exhibits as may aid in giving a construction to the patent." — lb. 183. A patent should be construed in a liberal spirit to sustain the just claims of the inventor. This principle is not to be carried so far as to ex- clude what is in it, or to interpolate anything which it does not contain. But liberality rather than strictness should prevail where the fate of the patent Is involved, and the question to be de- cided is whether the inventor shall hold or lose the fruits of his genius and labors. " [Said of a reissued patent.] Bubber Co. v. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 134. " The claims must be construed in con- nection with the descriptive parts of the specifi- cation and with reference to what is seen to be the real invention" Coffin v. Ogden et al., 7 Blatch. 61.— Blatckpord, 1869. 135. " The rights secured by a patent for an invention or discovery are as much property as anything else, real or incorporeal. The titles by , which they are held, like other titles, should not be overthrown upon doubts or objections capa- ble of a reasonable and just solution in favor of their validity. This principle should be steadily borne in mind by those to whom is intrusted the administration of civil justice." Blandy et al. V. Orifflth et al., 3 Fish. P. C. 609.— Swatnb, 1869. 136. " The identity or diversity of two ma- chines depends not on the employment of the same elements or powers of mechanics, but upon producing the given effect by substantially the same mode of operation or substantially the same combination of powers. ' ' Orompton v. Belk- nap Mills et al., 3 Fish. P. C. 536.— Clark, 1869. 137. " In the construction of a claim, refer- ence is to be had to the descriptive portion of the specification, or to any other portion of it, to as- certain the true interpretation of the claim. But where it Is clear and explicit, and especially where there is nothing in the specification which shows that the patentee did not mean just what the plain language of the claim imports, we are not aided by and have no need of aid from such specification." Bich v. Close, 8 Blatch. 41. — Woodruff, 1870. 138. " Much aid maybe derived in construing the claim of a patent by referring to the descrip- tive part of the specification, and reference may also be made, if need be, to the drawings and Patent Office model ; but neither the correspond- ence between the Commissioner and the appli- cant, nor the proceedings in the Patent Office, are admissible to enlarge, diminish, or vary the language of the claim." Goodyear Dental Vul- canite Co. et al. V. Oa/rdner, 8 Cliff. 408. — Clif- ford, 1870. 139. '■ Evidence to prove the state of the art is admissible, and expert testimony to aid in ex- pounding and defining technical words and phrases may be received ; but in all other respects the rules for the construction of letters-patent are the same as those applied in construing other grants and written instruments. Patents for in- ventions are to receive a liberal interpretation, and are, if practicable, to be so construed as to uphold and not to destroy the right of the in- ventor. ' ' — lb. 140. A patent is to be construed without refer- ring to correspondence upon rejections in the Patent OflSce forming part of the application. Piper V. Brown et al., 1 Holmes, 30. — Shepley, 1870. 141. " Where the claim immediately follows the description of the invention, it maiy be construed in connection with the explanations contained in the specifications, and. where it contains words referring back to the specifications, it cannot be construed in any other way." Seymour \. Os- born, 11 Wall. 516.— Sup. Ct. 1870. 143. ' ' Actual inventors of a combination of two or more ingredients in a machine, secured by letters- patent in due form, are entitled, even though the ingredients are old, if the combina- tion produces a new and useful result, to treat every one as an infringer who makes or uses or vends the machine to others to be used without their authority or license. . . . " They cannot suppress subsequent improve- ments which are substantially different, whether the new improvement consists in a new combi- nation of the same Ingredients, or of the substi- tution of some newly discovered ingredient, or of some old one, performing some new function not known at the date of the letters-patent, as a proper substitute for the ingredient withdrawn CONSTEUCTION OF PATENT— IN GENERAL. 93 from tlie combination constituting their inven- tion. Mere formal alterations in a combination in letters-patent, however, are no defence to the charge of infringement, and the withdrawal of one ingredient from the same, and the substitu- tion of another which was well known at the date of the patent as a proper substitute for the one withdrawn, is a mere formal alteration of the combination, if the ingredient substituted performs substantially the same function as the one withdrawn. " Patentees, therefore, are entitled in all cases to invoke to some extent the doctrine of equiva- lents, but they are never entitled to do so in any case to suppress all other substantial improve- ments, and the rule which disallows such pre- tensions, if properly understood and limited, is as applicable to the inventor of a device, or even of an entire machine, as to the inventor of a mere combination, except that the inventor of the latter cannot treat any one as an infringer whose machine does not contain all of the ma- terial ingredients of the prior combination, as in that state of the case the subsequent invention is regarded as substantially different from the former one, unless the latter machine employs as a substitute for the ingredient left out to per- form the same function, some other ingredient which was well known as a proper substitute for the same when the former invention was patented. ... " Bona fide inventors of a combination are as much entitled to suppress every other combina- tion of the same ingredients to produce the same result, not substantially different from what they liave invented and caused to be patented, as any other class of inventors. All alike have the right to suppress every colorable invasion of that which is secured to them by their letters-pat- ent."—/*. 143. " When a claim immediately follows a description of an invention, it may be construed in connection with the explanation contained in the specifications ; and when it contains words referring to the specification, it cannot properly be construed in any other way." Roberts v. Dickey, 4 Brews. 260.— Strong, 1871. 144. " Mere form is often immaterial, and therefore it is always held, in regard to infringe- ments, that a mere change of form, when the instrument remains in substance and in its mode of operation the same, will not avail an alleged infringer. But sometimes form is of the very substance of an invention, and change of form is the invention itself." Dennis v. Eddyetal., 4 Fish. P. C. 423.— Woodruff, 1871. 145. " No certain, definite rule can be stated by which to determine unerringly, in every case, what will amount to substantial identity. The jury, guided by general principles, must deter- mine each case upon its own circumstances. If, however, ' the invention of the patentee be a ma- chine, or an improvement on a machine, it will be infringed by a machine which incorporates in its structure and operation the substance of the invention — that is, by an arrangement of its mechanism, which performs the same service, or produces the same effect in the same, or substan- tially the same, way. ' ' ' Carter et al. v. Baker et al., 1 Sawyer, 513. — Sawyek, 1871. 146. " The question is, whether the given effect is produced substantially by the same mode of operation and the same combination of powers and devices in both machines ; mere colorable or evasive differences cannot defeat the right of the original inventor. The inquiry, therefore, should be whether the defendant's device is in substance and effect a colorable eva- sion of the plaintiff's contrivance, or whether it is really a new and substantially different thing. If the defendants have taken the same general plan and applied it for the same piurpose and produced the same effect, in substantially the same mode, although they have varied the form of construction merely, it will still be substan- tially, in contemplation of the patent law, the same thing ; otherwise it will not. ' ' — lb 147. " Whether or not one machine is an in- fringement of another . does not necessarily depend upon whether the mechanical construc- tions are different. But the question is, whether [whatever may be the mechanical construction] the latter machine contains the means or combi- nation found in the previous machine ; whether, taking the structure as you find it, you can see the new idea completely embodied in it." — lb. 148. Where complainant's patent is for a combination, "if the defendants have only varied their combination by employing well- known mechanical substitutes for some one or more material elements or parts of the plaintiff's combination, then there is an infringement ; for a mere known mechanical substitute for a thing, for the purpose of determining the question in issue, must be regarded as the thing itself." 149. " It does not necessarily follow, because a subsequent machine is better than or an im- provement on a prior patented machine, that it is not an infringement. It may or may not be an infringement, depending upon whether the better or improved machine embodies the old machine. It may contain the whole sub- stance of the first machine, and something more, or be constructed of an improved material which 94 CONSTRUCTION OF PATENT— IN GENERAL. renders it better and more useful, and makes it the subject of a patent in these particulars. Yet if it embodies the prior machine, or combina- tion, or improvement, or the patented portion of it, there is an infringement, and the inventor of the improved machine cannot appropriate the prior invention without being liable for infringe- ment, even though his own improvement is use- less without such appropriation of the prior patented machine. ' ' — Ih. 150. " In patents for machines, it is usual to say that the parts may be made of any suitable material, and that means known materials ; but even if it does not, a person who should after- ward discover a new material would have no right to make the machine, and the inventor is protected against a machine when made of any such material, though the second inventor would have the exclusive right to the material." Bailey Washing & Wringing Mach. Co. v. Lin- coln etal., 4 Fish. P. C. 379.— Lowbll, 1871. 151. "Patents are to be construed liberally, so as to sustain and not destroy the right of the inventor. Hence the whole of the specification may and phould be looked at to learn from the description of the invention not only how to make it, but to ascertain what it really is. By the requirements of the statute the description must be in full, clear, and exact terms, and it is, therefore, an authorized guide to an accurate comprehension of what the patentee meant to claim as his invention. It is only where the specification is expressly referred to that the claim is to bo construed in connection with it ; but, as a general rule, the explanations contained in it are to be taken as the inventor Is own inter- preter of the meaning of his claim, and of the essential qualities of the invention protected by his patent. ' ' Francis et al. v. Mellor et ai. , 8 Phil. 157.— McKennan, 1871. 153. " The plaintiff's invention being only an improvement of certain parts of a known ma- chine, he cannot treat another as an infringer because he has improved the previously existing machine or machines by using a form, construc- tion, device, or combination substantially differ- ent from that invented and patented by the plaintiff, though performing the same functions. " Taylor Y. Oarretson etal., 9 'Blatch. 156. — Hall, 1871. 153. " Ordinarily the claim of a patentee should be so construed as to secure to him the exclusive right to control the use of his actual invention, if this can be done without violence to the language of his claims ; but this general rule would hardly be acted upon in a case where it was evident that his claims had been expressed in loose, ambiguous, or general terms, for the fraudulent purpose of apparently covering subsequent inventions, especially where the ob- jectionable claim had been introduced in a reis- sue, for the purpose of covering the subsequent invention of another. " — lb. 154. " The mere substitution of a mechanical equivalent or equivalents for one or more of the elements constituting the combinations and or- ganizations . . . claimed, or any merely formal or fraudulently evasive change in the parts or arrangement embraced in the claim, would not relieve a party from liability as an infringer." —lb. 155. "The rule ut res magis -oaleat quam pereat is as applicable to patents as to any othei- instruments in regard to which it is the duty of the court to adopt a liberal construction, in order to give effect to the intention of the parties.'' Ca/rew v. Boston Elastic Fabric Co. , 8 Cliff. 356. — Clipfohd, 1871. 156. " Where doubts arise, it is the duty of the court to collect the intention of the parties from the whole instrument, and, if practicable, to adopt such a construction as will give it effect and render it available for the purpose for which it was granted." — lb. 157. " Where no patent is granted, the inven- tion, however novel, ingenious, or useful, may be used by any one ; and when a patent is granted, the patentee must stand by his patent. He gains no exclusive right, except for such a machine as his patent describes and secures, though it may be far less broad or comprehensive than his actual invention. ' ' Waterhury Brass Co. V. E. Miller & Co., Q Blatch. 77.— Woodkupf, 1871. 158. The words, " substantially as described and shown," are not to be construed as referring the claim back to the specification, so as to per- mit a party to escape the charge of infringement who substantially appropriates the improvement covered by the claim. — lb. 159. " Courts and juries should not favor the avoidance of the patent by an immaterial varia- tion. Quite otherwise ; . . when, in sub- stance and effect, the useful purpose for which the device or thing is intended is the same, it should be treated as an infringement ; but if in substance and effect it is different, it is equally true, on the other hand, that it is no infringe- ment." Hawes v. Cage, 5 O. G. 494. — Wood- ruff, 1871. 160. " By substitution of chemical equiva- lents, patents may as well be infringed as by me- chanical equivalents. When a new composition of matter or process of manufacture is invented CONSTEUCTION" OF PATENT— IN GENERAL. 95 and patented, it is easy for the chemist, with the aid of the specification in the inventor's patent, to suggest changes in the process by the substi- tution of chemical equivalents which may pro- duce similar or better results. It does not nec- essarily follow that such a use of chemical equivalents would not infringe the patent, even if in some respects tliey were improvements on the original process patented." Woodward v. Morrison et al., 1 Holmes, 124. — Sheplby, 1872, 161. "Every specification is to be read as if by persons acquainted with the general facts of the mechanical or chemical science involved in such inventions. The specification of the jDarts in a mechanical or chemical process is a speci- fication to ordinarily skilful mechanics or chem- ists of the well-known mechanical or chemical equivalents. If there are equivalents, mechani- cal or chemical, existing, but previously un- known to ordinarily skilful mechanics or chem- ists, these are not included in the specification, unless expressly stated therein. These are, in fact, new discoveries in themselves, independent of the specification, and may be used by all per- sons without infringing the patent." — lb. 162. " The complainant must abide by tlie specification and claim which he has made. If he has rights which, under the specification and claim, are not protected, the court cannot aid him." Smith v. Mliot, 9 Blatch. 400.— WooD- Kupp, 18T2. 163. Although the claim of a patent may specify a certain form of device, yet if it is not, in view of the prior art, limited to such forms, a defendant who uses another form, obtaining substantially the same result, will be held to be an infringer. Murphy et al. v. Eastham et al., 1 Hohnes, 113.— Sheplby, 1872. 164. " Undoubtedly in some cases the letters- patent include only the particular form described and claimed, not for the reason that the paten- tee has described and claimed that form only, but because the invention consists in that form only, and' only in that form can be embodied ; so that when the form is not copied the invention is not used. ' ' — lb. 165. "The actual claims cannot be rejected. The complainants must stand or fall by the claims as made, ' ' even though the real invention may be much broader than the claim. Meissner H al. V. BemeM'fg Co., 9 Blatch. 863.— Wood- KDPP, 1872. 166. " Probably no principle of patent law is better settled than that the patentee is limited by his claim. And the courts are only allowed to look at the detailed specification, models, or drawings, for the purpose of construing the claim ; as, for instance, if any doubt existed as to the parts of the lantern to be attached to- gether by the catch and lips, a reference to the preceding part of the instrument is allowable for the purpose of settling that point." Dennis V. Cross et al., 3 Bissell, 389.— Blodgett, 1872. 167. " The machine patented frequently has a broader scope than the particular form of the machine described as the form used by the pat- entee." Blake v. Bawson, 1 Holmes, 200. — Sheplby, 1872. 168. Where complainant has a plurality of patents, one cannot be used to support the other ; each stands alone. Wheeler, Jr., V. Clipper Mower & Reaper Co., 10 Blatch. 181. —Woodruff, 1872. 169. " Claims should be read in connection with the specification itself, and read in the light gained therefrom ; and it is proper to give such construction to the language employed as ex- presses the evident intention, if that may be done." Russell & Erwin M'f'g Co. v. Mallory et al., 10 Blatch. 140.— Woodrupp, 1872. 170. The existence of a feature in a model where it is not referred to in the specification will not help the patentee on the question of construing his patent. Barry v. Cugenheim et al., 5 Fish. P. C. 452.— McKennan, 1872. 171. "The patent covers all the modes and processes by which the principle of the inven- tion is made operative in practice. ' " McComb et al. V. Brodie, 1 Woods, 153.— Woods, 1872. 172. " In order to learn the true meaning and construction of the claim of a patent, the whole specification may be consulted ; and where that claim itself incorporates in it, by reference, sev- eral features of the invention, these become es- sential." Carter v. Messinger, 11 Blatch. 34, — ; Woodrupp, 1878. 173. ' ' All that is included in the specification is not necessarily included in the patent." Wheeler v. McCormiek, 11 Blatch. 334.— Wood- rupp, 1873. 174. " In determining the several questions of infringement, the jury must not judge about mere similarities or differences by the names of things, but must look to the whole structure and its several devices or elements in the light of what office or function they perform, and how they perform it, and find that a thing is sub- stantially the same as another, if it performs substantially the same function or office, in the same way, to attain the same result ; but the devices are substantially different if they per- form different duties or in a different way, or produce a'different result. ' ' Westlake v. Cartter et al., 6 Fish. P. C. 519.— Treat, 1873. 96 CONSTRUCTION OF PATENT— IN GENEEAL. 175. Doubts about the suflSciency of a claim are to be resolved in favor of the patent. Craig V. Smith et al., 2 Dillon, 375.— Dillon, 1873. 176. " The rights of the plaintiff depend upon the claim in his patent, according to its proper construction, and not upon what he may errone- ously suppose it covers. If at one time he in- sists on too much, and at another on too little, he does not thereby work any prejudice to the rights actually secured to him." Maaury. v. Anderson et al., 11 Blatch. 163. — Blatch. 1873. 177. " The patent shall be liberally construed, so as, if possible, to uphold it." IngeU v. Mast, 6 Fish. P. C. 415.— Swing, 1873. 178. " In the construction, the patent, speci- fications, and drawings are all to be taken to- gether."—/*. 179. Although a specification and claims may make no specific mention of certain parts, yet if they are clearly shown in the drawings, they may be construed' in the claims. — lb. 180. " An inventor is entitled to protection in all the functions which his invention may per- form, :whether claimed or not ; or, in other words, . . the claim will be extended, coex- tensive with the improvement. ' ' — lb. 181. ' ' Because in a particular case other tribu- nals, co-ordinate or appellate, have decided that certain words, when used in connection with their accompanying incidents, did import a claim for a result or principle, another tribunal should not treat these judgments as setting up formulas in all circumstances involving a similar mean- ing." Union Paper-Bag Co. v, Nixon et al., Q Ksh. P. C. 402.— Emmons, 1873. 182. " The patentee will be protected from obvious modes, readily adopted without inven- tion, for accomplishing the same end. "— J6. 183. "It would be a blemish upon the law, which professes to protect useful improvements, if . . substitutes, capable of selection by per- sons of ordinary intelligence, are not deemed evasions of an inventor's rights." — lb. 184. " It is a just rule that patents are to be construed liberally, so as to sustain the right of the inventor. Mere verbal discrepancies, therefore, are to be entitled to but little consid- eration. " Dorsey Harvester Bevoltiing Bake Co. v. Marsh et al., 6 Fish. P. C. 387.— McKbn- NAN, 1873. 185. A patent is not necessarily to be con- strued upon the position a comma may or may not have in the language used. Bobertson V. Secombe M'f'g Co., 10 Blatch. 481.— Blatch- FOBD, 1873. 186. "Where a patentee, after describing a machine, claims as his invention a certain com- bination of elements, or a certain device or part of the machine, this is an implied declaration, as conclusive, so far as that patent is concerned, as if it were expressed, that the specific com- bination or thing claimed is the only part which the patentee regards as new. True, he or some other person may have a distinct patent for the portions not covered by this ; but that will speak for itself. So far as the patent in ques- tion is concerned, the remaining parts are old or common and public." Brown y. Guild et al., 33 Wall. 181.— Bkadlbt, 1878. 187. " A patent embraces nothing more than the improvement described and claimed as new, and . . . any one who afterward discovers a method of accomplishing the same object sub- stantially and essentially differing from the one described, has a right to use it and to vend it to others to be used." Mitchell v. TUghman, 19 Wall. 387.— Sup. Ct. 1873. 188. " Doubtful expressions may be subject to construction, but where the language is clear and unambiguous, it must speak its own con- struction in the specification of a patent as well as in any other grant issued by public authority. Intention in every case, it may be admitted, is the primary rule of construction, but language invoked to support a particular theory must be such as is fit, when it is compared with the whole instrument, to express the imputed inten- tion, else the theory in question cannot be sup- ported, as courts of justice cannot legislate nor can they add to a grant or contract any stipula- tion or condition which it does not contain." —lb. 189. ' ' The court should proceed in a liberal spirit, so as to sustain the patent and the con- struction claimed by the patentee himself, if this can be done consistently v/ith the language he has employed." Klein v. Bussell, 19 Wall, 433. —Sup. Ct. 1873. 190. " Sometimes an old process produces a new product. If the thing produced be new, in and of itself, it is patentable as a new manufac- ture. If it be capable of being produced by various different processes, as, for instance, by hand, by the use of hand tools, or by automatic or other machines, yet when the product is in- dependent of the process, the patent is infringed by the unlicensed manufacture of the new prod- uct by any mode of manufacture, the process of manufacture being wholly unimportant. " In other instances, however, not only does a new process produce a new product, but the process is inseparable from the product, and in- heres in it after it is made, so that, upon inspec- ov..,oj.±ii;cTiO]sr OF patent— in general. 97 tion of the product, it is manifest tliat the proc- ess must have been employed." Merrill V. Teomans et al., X Holmes, 331.— Sheplet 1874. 191. " Inventors are a meritorious class of men. They are not monopolists in the odious sense of that term. They take nothing from the public. They contribute largely to its wealth and comfort. Patent laws arc founded on the policy of giving to them remuneration for the fruits, enjoyed by others, of their labor and their genius. Their patents are their title deeds, and they should be construed in a fair and liberal spirit, to accomplish the purpose of the laws under which thej are issued." Birdsall v. Me- DonaZd, 1 Bann. & Ard. 165. — Swatne, 1874. 193. " Any change merely colorable, involv- ing no new idea, requiring not invention but only mechanical skill to make it, a change which retains the idea of the patentee and the substance of his invention, notwithstanding the different drapery in which the substance is clothed, can- • not prevail to protect a party charged with in- fringement, " — lb. 193. A person cannot, by a mere change of form, be permitted to use a patented invention. Bantz V Elsas et al., 1 Bann. & Ard. 351. — Swing, 1874. 194. " Patents are to be construed liberally, and are not to be subjected to a rigid interpre- tation," Welling v. Rubber- Goated Harness Trimming Co. et al., 1 Bann. & Ard. 383. — Nixon, 1874. 195. " Men often build better than they know ; but where a fair interpretation of the words em- ployed to describe an invention or discovery in- cludes matters not in the mind of the patentee at the time, he is as fully authorized to claim the unlooked-for as he is the anticipated result." — /*. 196. "The same exact rule of interpretation is not to be applied at all times, but such, in each case, as will best enable the court to arrive at the meaning intended." — lb 197. "In construing a patent, the court should look to the patent, specifications, and drawings, to ascertain what is the thing claimed and pat- ented." Oeier v. Ooetinger, 1 Bann. & Ard. 553.— Swing, 1874. 198. A result " cannot be patented, but only the mechanical device by which it is attained ; and no device is an infringement of the patent but such as produces the same result by the same mode of operation, although the form may be varied." Myers et al. v. Duker et al., 1 Bann. & Ard. 535.— Giles, 1874. 199. " It would be wrong to stretch an inven- tion beyond the legitimate bounds of the discov- ery, so as to exclude all other inventions within the same field of operation." Fuller et al. V. Yentzer et al., 6 Bissell, 303.— Deummond, 1874. 300. " No one can take something old and ap- ply it in a new way or in a new form, so as to produce a particular result, and be protected beyond the particular way or form or device, and the" application which he has made." — lb. 301. " There are two modes of construing the patent law, and it may be said, perhaps, without any disrespect, that there are some judges who adopt one mode and some another. There arc those who are inclined to expand beyond legiti- mate boundaries the invention of the patentee. There are others who restrict it within narrower bounds, holding that the invention of the pat- entee must be limited by the particular mechan- ism and the application by which the result is attained, thus leaving the field of discovery open to all persons to explore it beyond the range of that particular mechanism and its applitation. . . . The latter seems . . the more correct rule."— JJ. 303. A construction of a word in a claim that would make the claim repugnant to the subject- matter of the patent should not bo made if any other construction can be. King v. Werner, 13 Blatch. 370.— Blatchford, 1874. 303. In a claim " the words ' substantially as. described ' must necessarily be implied ; and be- ing so implied, they involve a reference to the specification which is sufiiciently clear to pre- vent any misunderstanding of the scope and meaning of the claims in question." Westing- house, Jr. , V. Gardner & Eanson Air-Bralce Co. , 3 Bann. & Ard. 55.— Welkee, 1875. 304. ' ' The true construction of the claim is that which makes it coextensive with the inven- tion. " Weston et al. v. Nash et al., 1 Holmes, 488.— Shkplbt, 1875. 205. " We should not put a broader construc- tion on the language of the patentee than the whole subject-matter and description and nature of the case seem to indicate as designed ; no fancied construction, but rather what is natural and clear, considering what already exists upon the same subject. ' ' Trader et al. v. Messmore et al., 1 Bann. & Ard. 639.— Swing, 1875. 306. " While patents should be liberally con- strued, they should not be so construed as to en- able patentees to reach out and cover every im- provement or invention which, after seeing, they conclude they might have embraced and in- cluded in their patent, but which was not so embraced and included. ' ' — lb. COiSrSTRUCTION OP PATENT— IN GENERAL. 307. " Evidence of the state of the art is ad- missible in actions at law under the general is- sue without special notice, and in equity cases without an averment in the answer touching the subject. It consists in proof of what was old and in general use at the time of the alleged in- vention. It is received for three purposes and none other— to show what was then old, to dis- tinguish what was new, to aid the court in the construction of the patent." Brown et al. V. Piper, 91 U. S. 37.— Stjp. Ct. 1875. 208. A product may be claimed not as a prod- uct pure and simple, but as a product made by a particular process. Jones et al. v. Merrill et al., 8 O. G. 401.— "Wallace, 1875. 209. The words " as and for the purpose de- scribed " in a claim are capable of having a specific force given to them. Biissey et al. V. Wager et al., 2 Bann. & Ard. 229.— Wal- lace, 1876. 310. ' ' A liberal construction should be ac- corded to patents, so as, if possible, to secure to an inventor what is really his invention." — lb. 211. " References not sustained do not mod- ify the invention in question. ' ' Stevens v. Prit- clmrd, 4 Cliff. 417. -Cliffoed, 1876. 212. ' ' Since the leading case of Crane v. Price, 1 Web. Pat. Cases, 409, it has not been consid- ered safe to invoke the ordinary doctrine of equivalents in construing patents for new man- ufactures or compositions of matter." Rum- ford Chemical Works v. HecJcer, 2 Bann. & Ard. 351.— Nixon, 1876. 213. Where a patentee describes particular modes as essential to his invention, he is, as a rule, confined thereto, but that principle is not to be applied to a case where the device is ca- pable of being employed in another mode com- plete in itself, and when so used and employed all its .benefits are wholly secured. Union Paper-Bag Mach. Co. et al. v. Nixon etal., 1 Flippin, 491.— Emmons & Swing, 1876. 314. A claim is to be construed as favorably as its language, the state of the art, and the ex- tent and the character of the actual invention will permit. Metropolitan Wringing Mach. Co. V. Young et al., 14 Blatch. 46. — Wallace, 1876. 315. " The technical claims in a patent are to be construed with reference to the state of the art so as to limit the patentee to, and to give him the full benefit of, the invention he has made. They are also to be construed with the specifica- tion, so as to limit the patentee to, and give him the full benefit of, the invention he has de- scribed." Estabrook et al. v. Dunbar et al., 3 Bann. & Ard. 427.— Shepley, 1876. 216. " The general terms, and sometimes special words, in the claims must receive such a constrtiction as may enlarge or contract the scope of the cl^im, so as to uphold that inven- tion which the patentee has actually made and described, when such construction is not abso- lutely inconsistent with the language of the claim." — Ih. 317. "Where the claim immediately follows the description of the invention, it may be con- strued in connection with the explanations given in the description ; and if the claim contains words referring back to the specification, it can- not be properly construed in any other way. " ' Fuller et al. v. Yentzer et al., 94 IJ. S. 388.— Sup. Ct. 1876. 318. In construing a patent in view of the prior art, the comparison is to be made between the invention at the time of making it and the prior art, not between the invention at the time of application for patent and the then prior art. Sprague et al. v. Adriance et al., 3 Bann. & Ard. 134.— Wheeler, 1877. ' 319. " In determining the question of in- fringement the court or jury, as the case may be, are not to judge about similarities or diflfer- ences by the names of things, but are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform y it, and to find that one thing is substantially the same as another if it performs substantially the same function in substantially the same way to obtain the same result, always bearing in mind that devices in a patented machine are different in the sense of the patent law when they per- form diSerent functions, or in a different way, or produce a substantially different result." Union Paper-Bag Mach. Co. et al. v. Murphy et al., 97 U. S. 120.— Sup. Ct. 1877. 330. " Where the form is of the essence of the invention it is necessarily material, and if the same object can be attained by a machine differ- ent in form, where the form is inseparable from the successful operation of the instrument, there is no infringement. " Werner v. King, 96 U. S. 318.— Sup. Ct. 1877. 331. " In ascertaining the construction to be put upon" a " patent, the state of the art is a legitimate and necessary subject of considera- tion." BuVber-Coated Harness Trimming Co. et al. V. Welling, 97 -U. S. 7.— Sup. Ct. 1877. 333. " When a claim is . . . explicit, the courts cannot alter or enlarge It. If the paten- tees have not claimed the whole of their inven- tion, and the omission has been the result of inadvertence, they should have sought to cor- CONSTErCTION OF PATENT— IN GENEEAL. 99 rect the error by a surrender of their patent and an application for a reissue. They cannot expect the courts to wade through the history of the art and spell out what they might have claimed, but have not claimed." Keystone Bridge Co. V, Phainix Iron Go., 95 U. S. 374.— Sup. Ct: 1-877. 233. " Courts have no right to enlarge a pat- ent beyond the scope of its claim as allowed by the Patent Office or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct [as they always should be] the pat- entee, in a suit brought upon the patent, is bound by it. . . . He can claim nothing beyond it. But the defendant may at all times, under proper pleadings, resort to prior use and the general history of the art to assail the validity of a patent or to restrain its construction. The door is then open to the plaintiff to resort to the same kind of evidence in rebuttal ; but he can never go beyond his claim. As patents are pro- cured ez parte, the public is not bound by them, but the patentees are. And the latter cannot show that their invention is broader than the terms of their claim ; or if broader, they I'nust be held to have surrendered the surplus to the public." — lb. 334 Although " the terms used are some- what unfortunate and may tend to confuse, the court should never defeat a patent for a mere technical defect, if it clearly appears what the inventor has described and claimed as his invention. " Adams v. Joliet M'fg Co., 3 Bann & Ard. 1. — Blodgett, 1877. 335. To preserve the coherency of a claim, the word " wheels" may be construed to mean " disks." — J J. 336. A court may, if necessary to preserve a parent, reject words in a claim as surplusage. — /*. 327. "It is the duty of the court to uphold and sustain the patent instead of seeking for reasons to overthrow it. ' ' — Ih. 328. " A change of location of a part, in a combination where there is no new function performed by the changed member in its new location, will not evade a patent." — J J. 339. " No inventor has a right to gradually widen the scope of his claims to keep pace with the progress of invention. Especially in cases where mere changes of form become patentable by reason of involving functional differences, should it be left open to subsequent inventors to devise other changes of form involving other functional changes, where the same result is not attained in substantially the same way." Swaine Turbine & M 'fg Go. v. LaM, 8 Bann. & Ard. 488.— Shbplet, 1877. 230. A claim which is functional in form is to be construed to be for the means used. — lb. 331. The substitution of a particular part in a claim must sometimes be construed not solely with reference to the words in the specification, but also with reference to the limitations in the context of the claims. Pearl et al. v. Ocean Mills et al., 3 Bann. & Ard. 469. — Shbplby, 1877. 232. Although, in a sjDeciflcation, a patentee may describe his entire improvement as consist- ing of two elements, both of which must be pre- served, still, in the light of subsequent claims, the court may not be bound by such a declara- tion. Henderson v. Glcceland Co-operative Stove Co., 5 Bann & Ard. 604.— Brown, 1877. 233. A court will give a patent such a con- struction as will uphold it, if possible, bearing in mind that specifications and claims are fre- quently drawn by persons unaccustomed to the use of accurate legal phraseology. — lb. 334. " In all cases where the claim is for the result, it must be construed to mean the means by which the result is produced, whether there is any reference to the specification in the claims or not." — lb. 335. Although the theory upon which defend- ant's device is constructed may not be such as involves the -use of complainant's patented im- provement, yet if in fact it does involve such use, defendant's article is an infringement. — Jb. 236. The claim of a patent is to be construed in connection with the specification, and in view of the actual invention and of the state of the art. Bruff v. Ites, 14 Blatch. 198. — She-'man, 1877. 337. " The patentee, without describing equivalents, is entitled to use equivalents and to treat the use of equivalents by others as an in- fringement." Union Metallic Ca/rtridge Co. V. U. 8. Cartridge Co., 3 Bann & Ard. 593. — Sedeplby, 1877. 338. " The well-known and just principle of the courts of this country is, that a liberal con- struction is to be given to the language of all patents and specifications, tit res magis valeat qiiampereat." Bchillinger n . ©ttni/wr, 14 Blatch. 152.— Shipman, 1877. 339. ' ' Where there is a slight change in a machine by which a new result is brought about, and which might be the subject of a pat- ent, courts do not feel inclined to extend the in- vention beyond the mere change, although they might be inclined to sustain the patent ; but where something elementary, so to speak, is dis' 100 COlSTSTEUCTIOlSr OF PATENT— IN GENERAL. covered and constitutes fairly a part of tlie in- vention of the patentee, tlien" no " otlier in- ventor or manufacturer ouglit to be permitted to use that elementary part without paying trib- ute to the first inventor or originatdr. " Cor- nell V. Bowner & Bemis Brewing Co. etal., 7Bis- sell, 346.— Dkummond, 1877. , 240. " Nothing is better settled in the law of patents than that identity is not affected by col- orable differences, that regard is had to sub- stance and not to form, the inquiry being whether the infringing machine is the same in principle as that patented." Phillips et al. V. City of Detroit, 2 Flippin, 93. — Bbown, 1877. 241. " It is better to adopt that construction which, although limiting the scope of the claim, secures to the inventor all that he has actually invented and no more, than to adopt the one which would render the patent invalid, or one which, being broader than the invention of the patentee, would be a barrier in the way of future progress in discovery and invention." Ooodycar Dental Vulcanite Co. v. Davis, 3 Bann. & Ard. 115.— Shepley, 1877. 242. A patent cannot be construed to cover what is expressly disclaimed therein. Ashcroft V. Soilings, 11 0. G. 879. —Shepley, 1877. 243. ' ' ' Equivalent ' mechanism, known at the date of the invention, which accomplished in the same way and by the same mechanical means the same result, ... is protected by the patent. ' ' Stanley Rule & Lewi Co. v. Bailey, 14 Blatch. 510.— Shipman, 1878. 244. " The courts should not hasten to de- prive patentees of the advantages of a real and meritorious invention on account of the awk- ward and clumsy manner in which their claims are stated." Odiorne v. Denney, 3 Bann. & Ard. 287.— Nixon, 1878. 345. Where a device is not specified in the claim of a patent, and in the specification is only referred to as one of the appurtenances of the invention and not as a part of the invention it- self, it is not to be construed into the claim. Bullock Printing-Press Co. v. Jones et al., 3 Bann. & Ard. 195.— Wheeler, 1878. 246. " Cases arise not infrequently where the actual invention described in the specification is larger than the claims of the patent, and in such cases it is undoubtedly true that the patentees in a suit for infringement must bo limited to what is specified in the claims annexed to the specification ; but it is .equally true that the claims of the patent, like other provisions in writing, must be reasonably construed, and in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the language employed in the claims ; nor is it incorrect to say that due reference may be had to the specifications, drawings, and claims of a patent in order to ascertain its true legal con- struction." Bates et al. v. Coe, 98 U. S. 31.— Sup. Ct. 1878. 247. " In construing patents it is the province of the court to determine what the subject-mat- ter is upon the face of the specification and the accompanying drawings." — lb. 248. "If one inventor precedes all the rest, and strikes out something which includes and underlies all that they produce, he acquires a monopoly, and subjects them to tribute. But if the advance toward the thing desired is gradual and proceeds step by step, so that no one can claim the complete whole) then each is entitled only to the specific form of device which he produces, and every other inventor is eHtitled to his own specific form so long as it differs from those of his competitors, and does not include theirs." Chicago & Northwestern Bailway Co. V. Sayles, 97 U. S. 554.— Sup. Ct. 1878. 249. " The law does not permit . . . enlarge- ments of an original specification, which would interfere with other inventors who have entered the field in the miean time, any more than it does in the case of reissues of patents previously granted. Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has, in the mean time, gone into public use." — Ih. 250. " Whether a patent is for a process or a composition is especially a question of construc- tion, and is for the court to decide ; and whether a patent for a process is the same invention as a patent for a composition is certainly a mere question of law." Oiant Powder Co. v. Cali- fornia Powder Works et al., 96 U. S. 128.— Sup. Ct. 1878. 351. Although a claim may purport to be for a result, yet when the specification makes it clear that the result pure and simple is not intended to be claimed, the patent is not to be construed as being for a result. Badisclie Anilin & Soda Fabrik v. Biggin et al., 15 Blatch. 390.— Wheelbh, 1878. 252. Patents should be so construed that they may be sustained rather than defeated, and to give the benefit of the exact improvement. '^'Q} CONSTRUCTION OF PATENT- IN GENERAL. lO'i Blaisdell v. Tufts, 3 Bann. & Ard. 521.— Lowell, 1878. 253. The claim should be construed in con- nection -with the descriptive part of the specifi- cation. Haskell et al. v. Shoe Mach. M'fg Co. et al., 3 Bann. & Ard. 553. —Clifford, 1878. 254. " It is not always safe or proper in con- struing a patent to confine attention to the claims. These are sometimes too narrow to em- brace the whole invention disclosed in the de- scription and specifications." Gould et al. v. Ballard et al., 3 Bann. & Ard. 324. — NixoN, 1878. 255. " In order to ascertain the proper con- struction of the patent, it is important to know the nature and extent of the invention wliich was made by the patentee." Union Paper-Bag Mach. Co. et al. v. Pultz d, Walkley Co. et al., 15 Blatch. 160.— Shipmajt, 1878. 256. Where, preceding a patentee's invention, there has been an abandoned experiment, tend- ing in the same direction and known to the patentee, " the patentee is not necessarily limited in his patent to the narrow field between the model of his predecessor and his own perfected machine, for his invention may have actually covered a wider field, and may have included the territory which the previous investigator un- dertook to occupy and abandoned. The paten- tee has the right to take up the improvement at the point where it was left by his predecessor ; and if, by the exercise of his own inventive skill, he is successful in first perfecting and reducing to practise the invention which his predecessor undertook to make, he is entitled to the , merit of such improvement as an original inventor ; . . . and if he is an original inventor of the im- provement, he is entitled to the benefit of un- substantial variations and modifications in form of the principle of his invention, notwithstand- ing such modifications may run into and in- clude the forms of mechanism shown in the abandoned experiments of which he had knowl- edge, provided the invention is properly claimed and set forth in his specification." — li. 257. The court is unwilling to " vary the con- struction which would otherwise be given to a patent, in order to conform to the declarations of a patentee and former owner, whereby he undertakes to restrict the invention within a narrower compass than that which he had pre- viously stated in his specification." — 25. 258. Where complainants' patent in .suit has a claim with a certain limitation, although that limitation may be unnecessary in view of the prior art, the claim will be construed by that limitation in considering the question of in- fringement. Edgarton et al. v. Br^l^'^hal., p ( Bann. & Ard. 42.— Lowell;,1879. ' \ '' 259. " The correct rule of ct)flat'rv^ction is the one which will give the patentee' "what .lie has really invented, so far as is consistent with the language of his descriijtiou and claim, both of which are to be read together ; and where ... all ' the parts are conceded in the description to be old, and their efiiciency is referred to their peculiar- ity of construction and arrangement, it is this peculiarity which is the essence of the inven- tion. ' ' Williams v. Boston & Albany B. B. Co. , 17 Blatch. 21.— Wallace, 1879. 260. " The patentee's exclusive right is en- forcible only within the limits of his own defini- tion of it. What he has, then, not distinctly claimed, much more what he has not claimed at all, cannot be injected into his claims, even though that may be necessary to save his pat- ent. " Cause et al. v. Johnson et al., 4 Bann. & Ard. 501.— McKennan, 1879. 261. Where the claim of a patent mentions a thing generally, and the specification does not assign any special value to the form of that thing, the claim cannot be limited to that thing of the particular form shown and described in the pat- ent.- — lb. 262. Where a claim is evidently made broad upon a purpose, the court will not construe into it a limitation not found in its terms, in order to save its validity. Stewart v. Mahoney, 4 Bann. & Ard. 84.— Lowell, 1879. 263. " In construing a patent, it is first perti- nent to ascertain what, in view of the prior state of the art, the inventor has actually ac- complished, and this having been found, such a construction should be given as will secure the actual invention to the patentee, so far as this can be done consistently with giving due effect to the language of the specification and claim. ' ' Van Marter v. Miller et al., 15 Blatch. 562. — Wallace, 1879. 264. " The identity or diversity of . . . two machines depends, not in the employment of the same elements or powers of mechanics, but upon producing the given effect by the same mode of operation or the same combination of powers." Willimantie Linen Co. etal.T. Clark Thread Co. et al.,^ Bann. & Ard. 133.— Nixon, 1879. 265. Is not the true test of infringement some- times this: "One machine, with its peculiar mechanism, being given, does it or not require in- vention to produce the other, with its peculiar mechanism ?" — lb. 266. It is manifestly unjust to so construe a patent as to avoid something in the prior art and 103 OONSTEUCTION OF PATENT— IN GENEEAL. then, on the question of infringement, make it include the same sort of thing. Burdeit v. Mstey etcd., 16 Blatoh. 105.— Wheeler, 1879. 367. "Wliere one person has attempted to make an invention and laid it aside permanently, an- other person may take it up where he leaves it, make it successful, and cover the whole ground in his claim. Union Paper-Bag Mach. Go. v. Piiltz & WalkUy Co. et al., 16 Blatch. 76.— Shipman, 1879. 368. "Whep.a product arrived at by certain defined stages or processes is patented, only those things can be considered equivalehts for the elements of the manufacture which per- form the same function in substantially the same way. The same result may be reached by different processes, each of them patentable, and one process is not infringed by the use of any number of its stages less than all of them. ' ' Ooodyear Dental Vulcanite Co. v. Davis, 103 U. S. 333.— Sup. Ct. 1880. 869. " The courts of this country cannot al- ways indulge the same latitude which is exer- cised by English judges in determining what parts of a machine are or are not material." Union Water-Meter Co. v. Desper, 101 U. S. 333. —Sup. Ct. 1880. 370. " The courts . . should be careful not to enlarge by construction the claim which the Patent Office has admitted, and which the pat- entee has acquiesced in, beyond the fair inter- pretation of its terms." Burns v. Meyer, 100 U. S. 671.— Sup. Ct. 1880. 371. " The drawing could and should be looked at, if necessary, in order to explain an ambiguous or doubtful specification, and to make the invention capable of being understood and used. But it cannot supply an entire want of any part of a specification or claim in a suit upon a patent, although it might afford ground for a reissue covering the part shown byit. " [U. S. Rev. St., Sec. 4916.] Tinker v. Wilbur E. M. & B. M'fg Co., 1 Fed Bep. 138.— Wheeler, 1880. 373. " There is no doubt but that . . . the patent would give an exclusive right to the pat- ented invention for all the uses to which it could be put, whether contemplated by the in- ventor or discovered by himself or others after- ward. ' ' — 1 b. 373. "The rule for construction is that each patentee is restricted to the matters set out in his claim." Mere description of a device in the body of the specification gives no ground for claim of exclusive right thereto. Toohey v. Harding, 4 Hughes, 353.— Morris, 1880. 374. When a product is claimed as made by a certain process, another similar product not made by such process is not an infringement. Dittmar V. Bixet al., 1 Fed. Rep. 342.— Blatch. 1880. 375. Example of restricted construction given to a claim in view of the state of the art and the same restricted construction followed in passing on the question of infringement. TJiatclier Heating Co. v. Spear etal., 1 Fed. Rep. 411. — Blatchford, 1880. 276. " Patents rightfully issued are property, and are surrounded by the same rights and sanctions which attend all other jDroperty. Pat- entees as a class are public benefactors, and their rights should be protected ; but the public has rights also. The rights of both should be upheld and enforced by an equally firm hand, wherever they come under judicial considera- tion." Densmore et al. v. Seofield et al., 103 U. S. 375.— Sup. Ct. 1880. 277. A claim cannot cover every means of ac- complishing a proposed result. McMillan et al. V. Bees et al., 1 Fed. Rep. 733.— MoKennak, 1880. 378. "Whether two patents cover the same invention must be determined by the tenor and scope of their claims, not by the description in the specifications." — lb. 379. The patentee " must stand here upon his claim ; for the thing patented is what the inventor claims and not what he shows. If he states these too naiTowly the law authorizes him to surrender the patent, and reissue the same with ampler statements ; but until this is done the courts cannot give him more than he asks for. ' ' Del. Coal & Ice Co. v. Packer, 1 Fed. Rep. 851.— Nixon, 1880. 380. Claims to specific devices cannot be con- strue(i as claims for combinations of such de- vices. — lb. 381. " The whole description in a patent is to be looked at, as well as the name given to the subject of the invention, in order, according to the settled rule for the construction of all writ- ing, to give eSect to every part, and ascertain from the whole what is meant. ' ' Day v. Com- bination Bubber Co. et al., 2 Fed. Rep. 570. — Wheeler, 1880. 383. As there were prior to the patentee's in- vention, ' ' structures having all these elements arranged in the same order, although of differ- ent form and capacity, he was entitled only to his particular form of devices which were really different from those which had been in use or known before, and the combination of these de- vices with each other or others, so as to produce a new result in a new way." Sliarp v. Tifft, 18 Blatch. 133.— Wheeler, 1880. CONSTEUOTION OF PATENT— IN GENEKAL. 103 383. Befendants' device may infringe a claim in words when It does not la fact. Pearl ct al. V. A-ppleton Co. et al., 3 Fed. Eep. 153.— Lowell, 1880. 284. A disclaimer in the body of a patent may embody an error In fact as to the prior art, which error makes against complainant ; but " tlie courts have no right to disregard such disclaimer." Collins Co. v. L. Com et al., 3 Fed. Rep. 235.— Lowell, 1880. 385. "Where a construction broad enough to cover defendant's structure will Invalidate the patent, a narrower construction should be adopted. Broadnax v. Central Stock Yard & T)-ansit Co., 4 Fed. Rep. 314.— Nixon, 1880. 286. " While we cannot look outside of the patent for the explanation of terms In it which are not technical and are free from ambiguity, we can examine Into the history of the inven- tion patented, so as to be able to read the speci- fications In the light of the Inventor's knowl- edge." Giant Powder Co. v. Cal. Vigorit Pow- der Co. et al, 6 Sawyer, 508.— Field, 1880. 287. " It Is the office of the claims of a patent to reveal to the world what the characteristics of the invention are for which the patentee de- sires protection. If he fall to state these fully and correctly he may remedy the omission by surrender and reissue, but until then the court has no power to give him relief against infring- ers. " Delaware Coal & lee Co. v. Packer, 24 O. G. 1373.— Nixon, 1880. 388. Where the prior art, and the invention in view of the prior art, requires it, a part will be construed into the claim which Is not specifically mentioned in the claim. And when defendant's structure agrees with such prior art, instead of with complainants' structure, in such a case de- fendant will be held not to Infringe. Walters et al. V. Crandal, 30 Blatch. 118. — Blatch- FORD, 1881. 289. Where a claim, unless limited to the de- vices shown in the patent, will be void, it will be so limited by construction. Brown v. Deere et al., 3 McCrary, 433.— Treat, 1881. 390. Where the inventor is the originator of a basic idea In an apparatus, diif erences in minor parts, in defendant's structure, are not of sub- stance. Putnam et al. v. Vom Hofe, 19 Blatch. 63.— Blatchpokd, 1881. 391. When a patentee was the first to employ his improvement " for the peculiar function it performs, he is to be protected not only In the particular devices which he employs for this purpose, but against all other devices which are the mechanical equivalents for his." Knapp v. Joubert et al., 19 Blatch. 148.— Wallace, 1881. 393. " A patentee may misuse a word, but when we are seeking for his meaning the ordinary definition of flie words which he usesi must have weight." Boot et al. v. Larnb, 7 Fed. Rep. 223.— Lowell, 1881. 293. ' ' The scope of the letters-patent should be limited to the Invention covered by the claim, and , . though the claim may be illustrated, it cannot be enlarged by the language used in other parts of the specifications." "The pat- entee cannot go beyond what he has claimed and Insist that his patent covers something not claimed merely because it Is to be found in the descriptive part of the specifications. ' ' Leliigh Valley Railroad Co. et al. v. MellQn et al., 104 U. S. 112. -Sup. Ct. 1881. 294. " The word ' improved ' in this patent la ncft understood as representing that this desigu I is a mere Improvement upon another, esiiecially I as no other is mentioned, but is considered to mean that this design is, of Itself, new and dis- tinctive and Improved as compared with others, and in connection with the new to represent that it was original with the orator." Schoerken v. Swift, Courtney & BeecJier Co., 19 Blatch. 309.— Wheeler, 1881. 395. By the court ; " But the important com- parison is between the two things. If the de- fondant had taken the plaintiff's invention I should try to construe the claim 1;o conform to the fact rather than leave the parties to the dubi- ous expedient of a reissue." Consolidate^ Safety- Valve Go. v. Crosby Steam- Gauge <& Valm Co., 7 Fed. Rep. 768.— Lowell, 1881. 296. A patentee who is not the pioneer in his line of improvement cannot, "whatever the words of his claim, ' ' successfully enjoin the use of a device resembling his own only in its adop- tion of general ideas found in the prior art. — lb. 297. In order to give proper construction to patents and reissues, the courts must consider that state of the art and the object which the Inventor proposed to accomplish. Washburn & MoenM'fg Co. v. Saish, 7 Fed. Rep. 906.— Drummond, 1881. 298. Wire fences being old, and sharp points on other fences being old, " it was not compe tent for any inventor" of barbed wire fence " to do more than claim his own special method of forming and affixing the barb which he had devised." — lb. 399. It seems that a patent may be construed to cover whatever was new in the art with the patentee, though the terms of the claims do not specially cover it. Emerson et al. v. Howe, 8 Fed. Rep. 337.— Lowell, 1881. 300. A claim which, by its terms, is for a result 104 CONSTEUCTION OF PATENT— IX GENERAL. must be construed to be a claim for the means used to accomplish that result. Palmer v. Gat- ling Gun Co., 19 Blatch. 893. — Shipman, 1881. 301. Courts " seek to give the owner of the patent his actual invention, if such favorable construction can fairly be made. ' ' Mtch et al. v. A. N. Bragg <& Co., 8 Fed. Rep. 588.— Ship- man," 1881. 303, " The patentee is entitled to all the bene- fits which result from his invention, whether he has specified all the benefits in his patent or not." California Artificial Stone Co. v. Ferine, 7 Sawyer, 190.— Sawyek, 1881. 303. Where a device, as described and shown in a patent, has certain details of construction which are only casually mentioned in the de- scription and not specified in the claim, the claim will not be construed to include such minor details in order to save its validity. White V. E. P. Gleason M'fg Co., 8 Fed. Rep. 917.— Wecb^lbe, 1881. 304. Where the statement of invention in the body of the description differs somewhat from the claim, the latter controls. McKesson et al. v. Carnrick, 19 Blatch. 158. — Blatceford, 1881. 305. By the court: "The plaintiff's present position — that the process covers all methods of making waxed paper by machinery, ' and, therefore, whether or not the defendants carry on the making waxed paper by machinery, by the complainant's particular method or by a new method devised by themselves, and which dispenses with some of the steps used by the plaintiff in his particular mode, makes no differ- ence whatever as regards infringement ' — cannot be adopted." Hammerschlag v. Garrett et al., 21 O. Q. 1199.— Butler, 1883. 306. Though patentees must, at their peril, know all that has gone before in the art, yet this is a conclusive presumption rather than a fact ; and if they do not have this knowledge, or do not especially exclude, either by name or other- wise, all previous inventions which in many arts wduld be impracticable, yet it is allowable to construe the claims of a patent with reference to what has gone before, and to give the patentee the benefit of the restricted claim which results from such construction. Jones v. Barker et al., 11 Fed, Rep. 597.— Lowell, 1883. 307. " Upon a motion for preliminary injunc- tion, and in the absence of an acquiescence by the public in the I'alidity of the plaintiff's pat- ent, the court is confined within the limits of previous adjudications, and ought not, by grant- ing the motion, to give a new construction to previously construed claims, unless such con- struction is perfectly clear." Lantern Co. et al. v. Edward Miller & Co., 11 Fed. Rep. 718.— Shipman, 1883. 308. Naming a part in a claim does not there- by make the claim cover all parts of the same name contained in the machine, but only the part evidently intended. Hoe et al. v. Kahler, 30 Blatch. 430.— Blatchpord, 1883. 309. Where a patented device is simply an improvement in the details of a prior existing device, the patent will be limited by construc- tion so as to embrace only the devices described in the patent and their equivalents for perform- ing the same functions. PeXham v, Demarest, 13 Fed. Rep. 494.— Wallace, 1883. 310. A patent to two joint inventors cannot be construed broad enough to cover a prior de- vice invented by one of these joint inventors for which he applied for a patent, which application was rejected. Hopkins & Dickinson M'fg Co. V. Corbin et al., 103 U. S. 786.— Sup. Ct. 1883. 311. By the court : " The claims in the reis- sue relating to the apparatus, considered liter- ally, are broader than the claim in the original. Indeed, they describe the invention rather than the mechanism of the apparatus. But they are to be construed with reference to the specifica- tion, and so, if consistent virith the language used, as to secure the patentee the invention which is described. They are not to be con- strued if the language will reasonably bear such interpretation, so as to embrace any invention broader in its scope than that in the original patent." Brainardv. Cramme, 30 Blatch. 530. —Wallace, 1883. 313. By the court : " The claim industriously introduces the elements of the vertical curving. The inventor must have regarded that as a ma- terial element, and those who claim under the patent cannot now be heard to say that it is im- material. The question cannot now be left for the domain of testimony. It is determined by the claim." Le Fever et al. v. Bemington & Sons, 31 Blatch. 80.— Blatchpord, 1883. 313. A claim to "so forming," etc., will be construed to be a claim for the structure and not for its results. Lull v. Clark et al., 21 Blatch. 95.— Blatchpokd, 1883. 314. A claim which is nominally a single claim may, by construction, be divided into two claims. ' ' A reissue, with a division of the claim into two claims, would have been sustainable." —lb. 315. Where complainant's patented invention differs from the prior art only in form, then if defendant uses a different form he will not be an infringer. Barker v. Todd, 13 Fed. Rep. 473.— Blatchpord, 1882. CONSTRUCTION OF PATENT— IN GENERAL. 105 316. By the court : " la view of the fact that in the prior state of the art Dann and claimants under him must he limited to the specific device for which he obtained a patent, and as there are peculiar and marked variations in the construc- tion of the two boxes in question, I am con- strained to think that upon the question of in- fringement the complainant has failed to estab- lish his case." Neaey v. AlUs, 23 0. G. 1621. —Dyer, 1882. 317. A process claim, which is really a claim to the ordinary mode of using a machine, can only be supported as a claim for the mechanism. Oosset.al. v. Cameron et al., 11 Bissell, 389. — ■ Blodgett, 1883. 318. By the court • " With structures shown in the older stages of the art, I am therefore clearly of the opinion that Richardson must be confined to his special mode of producing the structure ; and I am also of opinion that what- ever of structure the defendants show is more nearly, in the mechanical mode of substituting it and in its mode of operation, like the older devices." Consolidates. Safety -Yalve Co. v. Kunkle, 14 Fed. Rep. 732.— Blodgbtt, 1883. 319. When a " wooden frame" is specified in a claim as an element of a combination, and only a wooden frame is described in the specifi- cation, the patent will be limited to a wooden frame. Harris et al. v. Allen et al., 15 Fed. Eep. 106.— Blodgbtt, 1883. 320. Where, in a reissue, the patentee omits an element from his combination claim he can- not have that element again construed . into the claim. Nye v. Allen, 15 Fed. Rep. 114. — Lowell, 1883. 321. In a reissue the language of the patent is to be construed strictly, because such patent is taken at a time when the invention is developed and understood. Hatch et al. v. Moffitt, 15 Fed. Eep. 252.— Lowell', 1883. 322. Where the defendant's device is rather an improvement upon some device of the prior art than an improvement upon complainant's device, complainant's patent will not be con- strued broad enough to cover defendant's ma- chine. — lb. 323. Defendant's machine was an entire re- versal of complainant's machine, but complain- ant being a pioneer in the art, defendant was held to infringe. Standard Measuring Co. v. Teague etal., 15 Fed. Rep. 390.— Lowell, 1883. 324. Where the patented thing differs from the prior art in the presence of a certain feature which must be construed into the claim to give that claim validity, defendant's device, not hav- ing that feature, cannot be held to infringe. Nafl Car Brake Shoe Go. v. B. & A. R. R. Co. et al., 15 Fed. Rep. 462.— Nelson, 1883. 335. Where a man has two patents, each pat- ent must stand alone as regards the construction thereof on any question of infringement. Washburn & Moen M'fg Co. v. Oriesclie, 5 Mc- Crary, 346.— Tbeat, 1883. 326. Although a claim, where only its terms are considered, may cover a part of a machine inoperative in itself, yet it is allowable to con- sider the specification in connection with the claim, and construe into the claim other operative parts. Moffitt v. Ca-oanaugh, 17 Fed. Rep. 336. — Shipmajst, 1883. 337. A United States patent cannot be invali- dated by a disclaimer found in an English pat- ent for the same invention, nor by the claims found in a later American patent to the same inventor. United Nickel Co. v. MelcJmr, 17 Fed. Rep. 340.— Blodgbtt, 1883. 328. " A reasonably liberal construction should be given in favor of the person who both originated the idea and made for the first time a good machine. ' ' Dunham v. Kimball et al., 17 Fed. Rep. 810.— Lowell, 1883. 339. The words " folded as described " at the end of a claim held to mean a particular kind of folding. Howe et al. v. Neems et al., 18 Fed. Rep. 40. — Deummond, 1883. 330. "If the patentee specifies any element as entering into the combination either directly by the language of the claim, or such a reference to the descriptive part of the specification as car- ries such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim and his privilege to restrict it. "If it be a claim to a combination, and be re- stricted to specified elements, all must be regard- ed as material, leaving open only the question whether an omitted part is supplied by an equiva- lent device or instrumentality." Fay & Co. v. Oordesman et al., 109 U. S. 408.— Sup. Ct. 1883. ' 331. Where the specification of a patent clear- ly makes a certain construction material, the patent must be construed so as to be confined to such construction. Sriow et al. v. L. S. & M. 8. R. Co., 25 O. G. 1380. -Wallace, 1883. 333. Where complainant's device was a com- bination of old elements, and defendants used in lieu of one of those elements a thing that was not a known substitute therefor, defendants were held not to infringe. Tower v. Bemis & Call. Hardware & Tool Co., 19 Fed. Rep. 498.— Lowell, 1884. 106 CONSTEUOTION OF PATENT— IN GENEKAL. 333. Where complainant's combination claim covered by its terms defendant's device, but in order to be valid was limited to a peculiarity of one of the parts, whicli peculiarity was absent from defendant's device, defendant was held not to infringe. — Ih. 334. Where a part described in a patent was nece.ssary to the structure, although not men- tioned in the claim, it was by construction made a limitation of the cbim. Lloyd v. Miller et al., 37 O. G. 101.- AcHBSON, 1884. 335. In the case last referred to, defendants' structure not having the peculiarity which was by construction made a part of the claim, they were held not to infringe. — lb. 336. Where a patentee mentions his invention as an "improved" thing, he thereby implies that there were in existence prior things on which his is an improvement. Doyle v. Spauld- ing et al., 37 O. G. 300.— Nixon, 1884. 337. Where the prior art operates to limit the construction of complainant's claim to his par- ticular form of device, a different form is not an infringement. Meld v. Ireland et al., 19 Fed. Rep. 833.— CoxB, 1884. 338. Where a part is not specifically men- tioned in the claim, and its presence is not essen- tial to the successful working of the parts men- tioned in the claim, it will not be construed into the claim. Bradley et al. v. Dull et al., 19 Fed. Rep. 913.— AcHESON, 1884. 339. Where the patented structure has two parts, one of which fulfils the conditions re- quired by the claim and the other does not, the latter cannot be construed into the claim. Lloyd V. Miller et al., 19 Fed. Rep. 915. — Aohbson, 1884. 340. Where the prior art calls for a certain construction of the claim, an article not coming within that construction does not come within the claim. Fetter et al. v. NewJiall, 30 Fed. Rep. 113.— Wheeler, 1884. 341. Where the claim in a patent makes the shape of a part mentioned material, defendants' device must have that shape in order to infringe. MeMarray et al. v. Mallory et al., Ill U. S. ' 97.— Sup. Ct. 1884. 343. Where the prior art approaches very closely to the patented invention, " the defend- ants cannot be adjudged infringers unless they have appropriated in substantial form of con- struction the identical elements which the com- jjlainant has the right to claim as new in his patent." And further, "to make the defend- ants liable as infringers it must appear that they have appropriated all the elements of the com- plainant's combination or their equivalents." Saladee v. Racine Wagon <& Carriage Co. et al, 37 O. G. 1133.— Dteb, 1884. 343. Where the complainant's patent is close- ly approached by the prior art, it must be limited in its scope to the ' ' particular combination of the devices described in the patent. " The main improvement in complainant's patented grate bars being the arrangement for letting them suddenly fall, and the defendant's arrangement being one which permitted them to gradually fall, defendant was held not to infringe. Gould V. Spieer et al., 30 Fed. Rep. 317.— Colt, 1884. 344. Where the language of a claim is plain, the court cannot enlarge its meaning by con- struction in order to make it cover the whole of complainant's invention. Becker v. Hastings et al., 38 O. G. 98.— BuTLBK, 1884. 345. Where a feature is essential to the valid- ity of a patent, defendant's structure must em- brace that feature or it does not infringe. Sayes V. Dayton, 30 Fed. Rep. 690.— Coxb, 1884. 346. Where one contestant seeks a construc- tion of language in a patent which is in accord- ance with the natural meaning of the words used, and the other contestant seeks a construction which the patentee admits he was not the first to make, and which he has endeavored to dis- claim, the former and the natural construction is the one which should be adopted. Brush et al. V. Condit et al., 33 Blatch. 346. — Shipman, 1884. 347. A reissue claim is to be " construed in the light of the contemporaneous facts which are shown in the ' file wrapper and contents. ' ' ' Yale Lock M'f'g Co. v. James, 33 Blatch. 394. — Shipman, 1884. 348. In construing the claim of a jDatent, the patentee is bound by the proceedings which take place in the Patent Office. — Ih. 349. Where complainant's patentee described as a part of his structure a certain recess, and described a certain function to it, and prior structures were the same except the recess was of a different form, the court refused a con- struction to the claim confining it to a recess of the form shown in the patent, and condemned the patent. Fryer v. Maurer, 33 Blatch. 368.— Wallace, 1884. 350. By the court ! "It is quite useless to at- tempt to sustain the patent upon refined distinc- tions in minor details in structure, which the patentee evidently never contemplated, and which certainly are not within the claims as ex- pressed in the patent. ' ' — lb. 351. The construction of a claim which will render a disclaimer altogether nugatory must be essentially wrong, and cannot therefore be ac- CONSTEUCTION OF PATENT— IN GENERAL. 107 cepted. Atlantic Q-iant Powder Go. v. Halings, 31 Fed. Rep. 519.— Acheson, 1884. 352. By the court : ' ' The only merit of com- plainant's invention is the peculiar form of his rock-shaft and the peculiar mode of applying it. He is not a pioneer in this department of ma- chinery. He did not invent the rocking motion as a process, nor the first moans of producing it, nor the mode of producing it by the interven- tion of a rock shaft. He does not stand at the head of the line ; he is only an individual in the line. He is entitled to what he has invented and nothing more ; and what he has invented is nothing but the specific device which he has patented. His claim is to be construed accord- ing to its terms, and is limited by them, and can- not be enlarged by construction." &oodwin v. Randolph,, 31 Fed. Rep. 575.— Beadlbt, 1884. 353. Where the new thing in a compound is the ratio of the elements used, a patentable in- vention does not result unless some special and marked benefit comes from the said ratio or proportion. And where the patented proportion was ten parts of kaolin to one part of shellac, the patent was held not broad enough to cover so substantial a variation as equal parts of kaolin and shellac. Welling et al. v. Orarie etal., 21 Fed. Rep. 707.— Nixon, 1884. 354. "Where alternatives are mentioned in a claim, and defendant uses one of tlie alternatives, lie infringes. Brown M'f'g Co. v. Deere et al., 31 Fed. Rep. 709.— Blodgett, 1884. 355. When the language of a claim is plain, the court cannot enlarge it by construction, even though it fails to cover the entire invention. Becker v. Hastings et al., 22 Fed. Rep. 837. — Butler, 1884. 356. ' ' Inventions may be said to be secondary or primary in their nature. " "In the one class of inventions slight differences may avoid in- fringement. In the other class, there must be substantial differences to ascribe such a change. " Morley Sewing-Mach. Co. et al. v. Lancaster,. 23 Fed. Rep. 344.— Colt, 1884. 357. Where, on the construction of a claim which wUl make defendant an infringer, the pat- ent in suit is anticipated, the defendant does not infringe. Buckingham v. Porter et al., 26 Fed. Rep. 759.— Sawyer, 1885. 358. Where the prior art differs from the pat- ented thing simply in certain specific points of construction, the patent is limited to such specific details of construction, and a defendant wlio does not use them does not infringe. McFarland v. Deere & Mansur M'f'g Co. et al., 22 Fed. Rep. 781.— Blodgett, 1885. 359. " The proper policy of the law is to limit rather than to amplify the extent of . . claims." ScMUin^ger v. Granford, 37 O. G. 1349.— Hagner, 1885. 360. " To eliminate what is a plainly declared element of a combination is beyond the province of judicial construction." Williams \. Stolzen- back etal., 33 Fed. Rep. 39.— Acheson, 1885. 361. It seems that the correspondence between an applicant for a patent and the Patent Office may be considered in construing the claim of the patent. Farmers' Friend M'f 'g Co. v. Chal- lenge Corn Planter Co., 33 Fed. Rep. 42.— Bax- ter, 1885. 362. ' ' ' When a patentee, after describing a machine, claims as his invention a certain com- bination of elements or a certain device or part of the machine, this is an implied declaration — as conclusive, so far as the patent is concerned, as if it were expressed — that tlie specific combi- nation or thing claimed is the only part which the patentee regards as new. True, lie or some other person may have a distinct patent for por- tions not covered by this, but that will speak for itself. So far as the patent in question is con- cerned, the remaining parts are old, or common, or public' " Howell et al. v. Lindsay et al., 113 U. S. 97.— Sup. Ct.'1885. 363. " In patents for combinations of mecli- anisms, limitations and provisions imposed upon tlie inventor, especially such as were in- troduced into an application after it had been persistently rejected, must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaim- ers. ' ' Sargeant v. Hall Safe & Lock Go. et al. , 114 U. S. 63. -Sup. Ct. 1885. 364. Where the state of the art is such that, in order to leave the patent validity, it must be nar- rowed by construction to certain details, tlie pat- entee is estopped from claiming that there is no material difference between tlie form of detail used by him and the form of the corresponding detail to be found in the prior art. Watson v. Cincinnati I. St. L. 0. R'y Co., 23 Fed. Rep. 443.— Woods, 1885. 365. Where a claim is functional in form, it will be construed to be for the mechanism hiv- ing such function. Peard v. Johnson, 33 Fed. Rep. 507.— CoxB, 1885. 366. Although a reissue is evidently intended to enlarge a claim, yet the court may, by con- struction, confine it within the original patent. Hartford Woven Wire Matt. Co. v. Peerless Wire Matt. Co., 23Blatch. 227.— Shipman, 1885. 367. Where a claim, either in terms or by im- plication, is limited to one form of article, as portable steam-engines having horizontal boilers. 108 CONSTEUCTION OF PATENT— IN GENERAL. the combinations mentioned in the claims are open to free public use when applied to other forms, as vertical boilers. Salieidler v. Tustin et al., 33 Fed. Rep. 887.— Acheson, 1885. 368. Where a problem which an inventor has worked out is also originally stated by himself, he is entitled to a broad construction of his pat ent ; but when the same problem has been stated before his time and worked out in other ways, he is not entitled to a broad construction, Wash- lurn & Moen M'f'g Co. et al. v. Orinnell Wire Co. et cd., 34 Fed. Rep. 23.— Brewer, 1885, 369. " As a rule, a patent for a combination includes the known eijuivalents for the respec- tive elements of the combination. " Bate Befrig ■ erating Co. v. Eastman, 33 O. G. 517. — Ship- man, 1885. 370. In that case where a certain arrangement of parts is claimed, and " is for an improvement merely in the department of mechanics to which it pertains, it must be limited in its scope to the ' arrangement ' of devices described and claimed in It as new ; and it cannot be expanded to ap- ply to substituted devices different in character and dissimilar in form merely because they per- form some of the intended functions of the pat- ented devices, or because the same general result is effected by both." Dyer et al. v. Nat' I Hod Mevating Co., 34 Fed. Rep. 183.— McKenkan, 1885. 371. The state of the art and the proceedings in the Patent Office in obtaining the patent in suit may both be taken into account in arriving at a construction of the claims of a patent. Fay, J. A. & Co. V. Allen, 33 O. G. 1355.— Blatch- FORD, 1885. 373. A reference in a claim to the drawings and specification undoubtedly constitutes them to a certain extent, and for some purposes, a necessary part of the claim, for the latter cannot be understood without importing into It the things referred to as a part of it. Reed et al. v. Chase etal., 35 Fed. Rep. 94.— Matthews, 1885. 373. It is " the well-established rule of con- struing patents in the light of the existing state of the art, so as, by separating things which, although part of the description, were well known and in common use, to eliminate the precise invention which it must be presumed the patentee intended to cover as his own, unless the claim itself is so express and unambiguous as not to admit their exclusion ; and also the equally well-recognized rule that a patent, even though it claims a device by a particular description, must be held also to include everything which is' a mere equivalent for it, not itself involving in- vention. Without the aid of these reasonable and beneficial rules of construction few patents would be of any practical value. ' ' — lb. 374. Where a patentee has discovered a princi- ple, it is not true that any sort of device which makes use of that principle is within his patent. " It is the device by which he may avail himself of the beneficial influence of his principle, and this court always restricts a party to his device. " Steam Gauge & Lantern Co. et al. v. St. Louis Railway Supplies M'fg Co., 33 O. G. 889.— Treat, 1885. 375. Patents and the like pertaining to the art may be offered in evidence and used at the hearing on the question of the construction of a patent in issue, although not set up in defend- ant's answer. Eaahus v. Broomall, 115 U. S. 439.— Sup. Ct. 1885. 376. Although a machine prior to that of the patentee may possibly be used for the same pur- pose, yet, if not practically useful in that way, it will not prevent a construction of the patent so broad that " no mere change in the details of construction should relieve a party from the charge of infringement. " Nafl Mat Pouncing Macli. Co. V. Tliom et al., 25 Fed. Rep. 496.— Colt, 1885. 377. A court will not by construction make the patent something not suggested in the pat- ent, as a characteristic or peculiarity of the in- vention. Bradley & Hubbard M'fg Co. v. Charles Parker Co., 84 O. G. 249.— Shipman, 1885. 378. The proceedings in the Patent Office are to be taken into consideration in construing the breadth of a patent. Shepard et al. v. Garri- gan, 116 U. S. R. 593.— Sup. Ct. 1886. 379. ' ' Where an applicant for a patent to cover a new combination is compelled by rejection of his application by the Patent Office to narrow his claim by the introduction of a new element, he cannot, after the issue of the patent, broaden his claim by dropping the element which he was compelled to include in order to secure his pat- ent." — lb. 380. Where a claim is to a combination of parts, and a prior structure contains the same combination, except a difference in detail of one of the parts, there is no room for the applica- tion of the doctrine of equivalents on the ques- tion of infringements. Phipp v. Tost, 26 Fed. Rep. 447.- Wallace, 1886. 381. "The scope of letters-patent must be limited to the invention covered by the claim ; and while the claim may be illustrated, it can- not be enlarged by language used in any other part of the specification. " Tale Lock M'f'g Co. V, Ch-eenUaf, 117 U. S. 554.-- Sup. Ct. 1886. CONSTRUCTION OP PATENT— IN GENERAL. 109 382. Where a suit is brought upon two pat- ents, they cannot supplement each other ; each is to be considered by itself. Blades v. Rand, McNally cfe Co., 37 Fed. Rep. 93.— Blodgett, 1886. 383. Where an applicant for a patent, being rejected upon a prior rejected application, ac- quiesces in the rejection, he is estopped thereby, and his patent is to be construed thereby. — lb. 384. For an example of a patent on a ticket case held limited to the exact devices shown and described, in view of the prior art, see — . — Ih. 885. Such a construction should be given to a claim as will cover the real invention. Hoff d al. V. Iron-Glad M'f'g Go., 23 Blatoh. 481. —Wallace, 1886. 386. ' ' The claims of the patent are to be read in the light of, and in connection with, the specifications. This is an elementary principle in patent law. ' ' May v. County of Fond du, Lac, 'in Fed. Rep. 691.— Dyer, 1886. 387. Patentees are bound by concessions and amendments which they make in their appli- cations for patents. Boemer v. Peddie et al. , 27 Fed. Rep. 702.— Wheeler, 1888. 388. " The fact that the machine in which the patented combination is used is a different ma- chine from that in which the combination was first described is not a valid defence in a suit for infringement, where the combination pat- ented is only a part of the machine described. " La Rue Y. Western Electric Co., 28 Fed. Rep. 85.— Brown, 1886. 389. For an example of a patent strictly limited in view of the prior art, and thereupon the defendant held not to infringe, see — . Frost et al. V. Chase, 28 Fed. Rep. 103.— Colt,' 1886. 390. Where a patented invention " is in effect a primary one, the word ' substantially ' will ' be made to cover differences alike numerous and important.' " Hubel v. Dick, 28 Fed. Rep. 133.— Shipman, 1886. 391. A part not specified in a claim, and only referred to in the specification to explain the mode of operation, will not be read into the claim by construction. Grain Drill Manufac- turers' Co. V. Hartetal., 38 Fed. Rep. 367.— BLon&ETT, 1886. 393. Although the claim of a patent may be limited in view of the approximate prior art, such limitation does not prevent the patentee from covering not only the specific devices he shows, but also the known equivalents therefor. Belle Patent Button Fastener Co. v. Lucas, 28 Fed. Rep. 371.— Colt, 1886. 393. Where an "invention is of decided originality, . . . the patent will deserve to be so construed as to afford to the inventor and his assignee the amplest protection against devices which, however greatly differing in form, yet copy the principle of the invention or its mode of operation." Penn. Diamond, Drill Co. v. Simpson et al., 37 0. G. 218.— Achbson, 1886. 394. " As a patent is read by persons skilled in the art to which it relates, so should it be read by the court." Tondeur v. Stewart et al., 28 Fed. Rep. 561.— Achbson, 1886. 395. Courts will not " ignore the salutary rule which, discarding subtleties and technicalities, interprets a patent according to its true intent and meaning, so as to give the inventor the bene- fit of what he has actually invented, even though his claims be carelessly or inartificially drawn." Steam Gauge & Lantern Go. v. Ham M'fg Co., 38 Fed. Rep. 618.— Coxk, 1886. 396. ' ' Some persons seem to suppose that a claim in a patent Is like a nose of wax, which may be turned and twisted in any direction by merely referring to the specification, so as to make it include something more than or some- thing different from what its words express. The context may undoubtedly be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim, but not for the purpose of changing it and making it different from what it is. The claim is a statu- tory requirement prescribed for the very pur- pose of making the patentee define precisely what his invention is, and it is unjust to the public, as well as an evasion of the law, to con- strue it in a manner different from the plain im- port of its terms. ' ' White et al. v. Duribar et al., 119 U. S. 47.— Sup. Ct. 1886, 397. A patentee " is not at liberty ... to in- sist upon a construction of his patent which will include what he was expressly required to abandon and disavow as a condition of the grant." Sutter v. Robinson, 119 IJ. S. 530. — Sup; Ct. 1886. 398. Where the prior art does not call for the construction of a patent narrower than is ex- pressed by the terms of its claims, it will not be narrowed by construction. Lamson Cash S'y Co. V. Osgood Cash. Car Co. et al. , 39 Fed. Rep. 310.— Colt, 1886. 399. No change in the form or shape of the parts of a patented machine is material on the question of infringement so long as the defend- ant's machine does not vary from the essential character of those parts as they exist in the de- scription given in the plaintiff's patent. Royer et al. V. Coupe, 29 Fed. Rep. 358.— Carpenter, 1886. 400. Where a patent is for a combination, the 110 OONSTEUCTION OF PATENT— SPECIFIC CASES. fact that its main features are old, considered singly, does not limit the complainant to the ex- act form of mechanism found in the patent. The patent is to receive a reasonably broad construc- tion, and those should be held to be infringers who accomplish the same result with substan- tially the same or equivalent means. Boston Blectric Go. v. Fuller et al., 39 Fed. Rep. 515. —Colt, 1886. 401. Where a term, as read in a claim, is ca- pable of two meanings, and therefore ambiguous, the true meaning must be ascertained by resort to the descriptive part of the specification in order to discover what the patentee describes as new, and what the public have a right to un- derstand was intended to be claimed. Allison V. Ti-ustees of N. T. & Brooldyn Bridge, 39 Fed. Rep. 517.— "Wallace, 1886. 408. A construction of a patent which is called for by necessity cannot bo carried further than is called ^f or by that necessity. Stiles v. Bice et al., 29 Fed. Rep. 445.— Carpektbr, 1887. 403. " A limitation introduced by construc- tion must be based on the express words of the instrument, ahd most stand in the same terms in which it is introduced. ' ' — lb. 404. "A method or feature which is men tioned only by the way of recommendation, in describing an invention, must generally be con- sidered as a subordinate or secondary and not an essential part of the invention, and, in the absence of apt language in the claim, it can- not be read into the claim, even to limit the claim to the real invention of the patentee." HoUiday et al. v. Pickhardt et al., 29 Fed. Rep. 853.— Wallace, 1887. 405. Where a patent has two claims, one of which covers the real improvement of the patent and the other covers something else, and the defendant infringes the terms of that claim, but not the claim which covers the real improve- ment, defendant will not be held to be an in- fringer. Bragg et al. v. Fitch et al., 131 U. S. 478.— Sup. Ct. 1887. 406. A statement in a patent that a thing can be done, without showing how to do it, cannot serve to broaden the construction of the claims. LoMbSon Cash B. R. Go. v. Martin et al., 30 Fed. Rep. 824.— Colt, 1887. 407. " Where change of form or combination only is invented, each inventor must be content with the structure described and claimed by him. " In such case the doctrine of equivalents cannot be invoked to suppress improvements on a well-known machine. HUl v. Sawyer et al. , 31 Fed. Rep. 282.— Coxe, 1887, 408. " It sometimes happens that an invention contains features of utility which may be adapt- ed to other uses than those specifically contem- plated by the inventor, but those uses are kindred uses, or are an extension of the features into use in the development of art. In these cases the feature of utility exists in the patent and is ex- pressed by the claims, but the use is not broad- ened. That principle would not support a pat- ent claimed and granted for a feature which was not novel, as protecting it for another feature which was dormant in it and afterward proving to be useful." Ingham et al. v. Pierce et al., 31 Fed. Rep. 822.— Sbverens, 1887. 409. Although the wording of a claim may be broad and general, yet if the state of the art re- quires it to be specific, such meaning will be given to the claim by construction ; and if the defend- ant has not the specific parts he will not be held to infringe. Wheeler et al. v. Hart et al., 32 Fed. Rep. 78.— Blatohpoed, 1887. 410. Where, in an application for patent, the Patent Office objects to a claim because of a name given to a part therein, and the applicant acquiesces in the change of name, that does not create an estoppel as regards a broad construc- tion of the claim. Tale Lock M'fg Go. et al. V. Mw Haven Sav. Bank, 32 Fed. Rep. 167. — SniPiMAN, 1887. 411. A construction of a claim of a patent which makes it a mere duplication of another claim of the same patent is to be avoided. Filley V. Littlefield Stove Go. et al. , 30 Fed Rep. 434. — CoxE, 1887. 412. "Specifications cannot be used so as to enlarge the claims in the patent and make them cover more than is contained in such claims." Byerly v. Gleveland Linseed Oil Works, 31 Fed. Rep. 73.— Welkbr, 1887. CONSTRUCTION OF PATENT— SPECIFIC CASES. 1. A patent for an improvement in the art of making nails by means of a machine which cuts and heads the nails at one operation is not a patent for an abstract principle, nor for the different parts of the machine, but for a com- bination of the various mechanical powers. Gray et al. V. James et al., 1 Peters' C. C. 394. — Wash. 1817. 3. The patent of Oliver Evans, of January 22d, 1808, covers the improvements in the sev- eral machines and the machinery as a whole. Mans V. Eaton, 3 Wheat. 454.— Sup. Ct. 1818. 3. The patent in suit was for the mould-board of a plough. In description the patentee stated CONSTEUCTION OP PATENT— SPECIFIC CASES. Ill that a certain shape should he " ahout" so and so. The word " about" rejected as surplusage. Davis V. Palmer, 2 Brock, 298. — Maeshall, 1837. 4. The patent of. Gideon Davis, of October 1st, 1835, is not for a mould-board of a spiral curve, nor for a mould-board worked to circular or spheric lines generally, but for a mould-board with face formed by transverse segments of cir- cles whose radii bear t6 each other the propor- tion of thirty-six to twelve. — lb. 5. PlaintifE's claim was : " I claim as my in- vention the connection of the reed with the yarn-beam, and the communication of the mo- tion from the one to the other, which may be done as above specified." Held, " that the pat- entee limits his invention to the specific machin- ery and mode of communication of the motion from the reed to the yarn-beam set forth and specially described in the specification. ' ' Stone V. Sprague et al., 1 Story, 370. — Stoet, 1840. 6. Complainant's ice plough had a double series of cutters in parallel planes ; defendant's plough had a single series in one plane. Both had a series of chisels each progressively below the other, and an adjustable guide ; complainant 's guide was a duplicate of his chisel-plate ; de- fendant's guide was a smooth iron. Held, that defendant infringed. Wyeth et al. v. Stone et aX., 1 Story, 373.— Stoet, 1840. 7. The claim of complainant's patent was : " 1 now claim as my invention and desire to se- cure by letters-patent the increasing of the depth or space between the upper or outer sur- face of the rib, and the lower or inner surface of it, at the part where the cotton is drawn through the grate, so that it shall be equal to the length of the fibre of the cotton to be ginned [whether this be done by making the ribs thicker at that part, or by a fork or division of the rib, or by any other variation of the perpendicular form] ; and I also claim as part of the same im- provement the sloping up of the lower or inner surface of the rib so as to meet the upper or outer surface above the saws, leaving, when the rib is inserted into the frame, no break or shoulder be- tween the two surfaces, but a smooth and uninter- rupted passage upward between the ribs, as above described." The court construed this claim as follows: "That rib is the thing claimed, and not the thickness or depth, or spaces of the rib alone, or the sloping up of the surfaces thereof alone. Both are claimed as parts of the same improvement, but neither alone as constituting it." Carver v. Braintree M'fg Co., 3 Story, 433,— Stoet, 1843. 8. The claim in issue was ; " We claim as our invention the construction and use of an endless apron, divided into troughs or cells, in a machine for cleaning grain, operating substantially in the way described." Thereof the court said : " It is . . . clear that it was not a claim of an in- vention of an endless apron of troughs or cells, but of an endless apron of troughs and cells combined with a particular threshing machine described in the specification." Pitts v. Whit- man, 3 Story, 609.— Stoet, 1843. 9. The claim in a patent was : " I now claim as my invention and desire to secure by letters- i patent the increasing the depth or space between ; the upper or outer surface of the rib, and the i lower or inner surface of it, at the part where i the. cotton is drawn through the grate, so that I it shall be equal to the length of the fibre of ] the cotton to be ginned [whether this be done by making the rib thicker at that part, or by a fork or division of the rib, or by any other vari- ation of the particular form] ; and I also claim as part of the said improvement the sloping of i the lower or inner surface of the rib so as to ■ meet the upper or outer surface above the saws, ! leaving, when the rib is inserted into the framte, ! no break or shoulder between the two surfaces, ! but a smooth and uninterrujDfed passage upward i between the ribs, as above described. ' ' The plaintiff contended that the sloping up of the rib so as to meet the upper or outer surface of the saw, as well as the manner of fastening against the framework of the gin, were not es- sential parts of his invention. The court held the contrary. Carver v. Heyde et al., 16 Peters, 513.— Sup. Ct. 1843. 10. The claim in complainant's patent was : " I claim the application of plaster-of -Paris in the construction of all iron safes, in the manner above described, or in any other manner sub- stantially the same." The court instructed the jury that this claim meant plaster-of -Paris of a certain thickness put in as a liquid paste, and into the door as well a|3 into the body. Adams et al. V. Edwards et al., 1 Fish. P. C. 1. — WOODBUET, 1848. 11. The claim in complainant's patent was : " What we claim as our invention and wish to secure by letters-patent is the manner of con- structing the wheels for railroad cars or for other purposes to which they may be applied with double convex plates, one convex outward and the other inward, and an individual limb, the whole cast on one piece, as herein fully set forth. ' ' Complainant contended that the words, " One convex outward and the other inward," were inoperative. The court said : "It must be borne in mind that the question is not what 113 CONSTRUCTION OF PATENT— SPECIFIC CASES. might liane ieen done, but wliat has been done by the patentees. ' ' And further ■ ' ' Although the court ■will endeavor, ut res Daleai, so to construe the patent as to make it coextensive v?ith the inven- tion, yet the language used may be too clear to be controlled by any extrinsic evidence, and the statute itself contemplates that errors of descrip- tion may exist beyond the power of the court to correct, and provides a remedy by a surrender of the patent." The court denied plaintiffs' contention. Many y. Sizer et al.,'l Fish. P. C. 31.-SPKAQUE, 1849. 13. Where complainant's patent on a car- wheel showed a curvature in the wheel-plate, it was held that the patentee was not limited to the degree of curvature therein represented. Many v. Sizeretal.,1 Fish. P. C. IT.^Spragub, 1849. 13. In the specification of complainant's pat- ent for car-wheels, the wheel-plates were de- scribed as parallel, or nearly so, one convexed outward and the other inward ; they were so mentioned in the claim. It was held that plain- tiff was not restricted to plates curved or con- vexed in the same direction, but that his patent might cover plates both curved inward or both curved outward, 'as well as those which were parallel, or nearly so. — lb. 14. The claim in a patent was : " The extend- ing of the oven under the apron or open hearth of the stove, and the combination thereof with the flues constructed as above specified. " " The invention of the plaintiff consisted in adding a close fiue or fire-chamber in front, between the front plate of the stove and the front plate of the oven, to what was known as the Hathaway stove. In the latter stove the oven was extend- ed under the apron or open hearth, and there were reverberating flues— that is, two flues start- ing from the top of the back of the stove, one at each side, running down the back and under the bottom to the front, and there uniting in a cen- tre flue which returned under the bottom and up the back to the stovepipe." Thereof the court said : " The construction of the claim on which the court have agreed is this, that the in- vention of the patentee is a combination of the extension of the oven under the hearth of the stove, and the flues, as described by him, with the flue or fire-chamber in front of the stove formed by the two front plates." "His claim is for the combination of the extended oven and the several flues, with the flue or fire-chamber in front of the stove. ' ' Buck et al. v. Hermanee, 1 Blatch. 398.— Nelson, 1849. 15. Plaintiff's claim was: "The application of the expansive and contracting powers of a metallic rod by different degrees of heat, to open and close a damper which governs the ad- mission of air into a stove or other structure in which it may be used, by which a more perfect control over the heat is obt^ained than can be by a damper in the flue." This was. held to be, " the application of the principle of the contrac- tion and expansion of a metallic rod by the use of certain mechanical contrivances particularly described and set forth, to the cast or sheet-iron stove in common use." 'Foote v. Silaby et al., 1 Blatch. 445.— Nelson, 1849. 16. The claim in complainant's patent for im- provement in street railways was : " The em- ployment of plates or rails, either of cast or of wrought iron, constructed and operating upon the same principle or in the manner herein de- scribed ; having narrow grooves on each side of the track for the flanches of car- wheels to run in, by which they are adapted to the unobstructed passing over them of the various kinds of com- mon carriages, and to the running of the wheels on slight curves without dragging. I also claim, in combination with such grooved rails or tracks, the employment of plates of cast iron for the covering and crossing of gutters, such plates being constructed as described, and having the necessary flanch channels cast in them." The court said that, in view of the prior art, these plates must be "depressed to a plane exactly corresponding wjth that of the street in which it maybe introduced." Defendant's device con- sisted " of a double flat rail of cast iron placed on the inner side of a curve or corner intended to be passed, and an ordinary flat rail on the ex- terior line of the same curve to be passed ; and the whole of this machinery . . . constructed on the same plane with the general track of the road elevated to whatever point that track may be raised, and without regard to the convenience of ordinary carriages making transverse passages through the streets." Defendant was held not to infringe. Stimpson v. B. & S. B. B. Co., 10 How. 339. -Sur. Ct. 1850. 17. In the Woodworth planing machine the rotary cutter was regularly cylindrical. Defend- ant's cutter- wheel w^as a very flat cone set upon a leaning shaft, and made a long shaving cut. Defendant was held to infringe. Gibson v. Van Dresar et al., 1 Blatch. 533.— Nelson, 1850. 18. In the "Woodworth patented planer the boaird was kept to its bed by means of pressure rollers acting upon its face. In defendant's — which was held to infringe —the rotary guides were so arranged and adjusted as to press against the edge of the board ; and being somewhat CONSTRUCTION OF PATENT— SPECIFIC CASES. 113 oblique to the motion of the board, they held the board to its bed. — lb. 19. In Blanchard's lathe the model and the rough block had a continuous rotary motion connected with a lateral motion, the former pro duced by a belt and pulleys, the latter by screws. In defendants' machine the model and the rough block rotated by an intermittent motion, and moved laterally by a rectilinear reciprocating motion, the former being produced by a ratchet- wheel and the latter by a crank. Defendants were held to infringe. Blancliard v. Seeves et al., 1 Fish. P. C. 103.-Gribk, 1850. 20. A reissue of the original Morse patent on telegraphs contained a claim covering the princi- ple involved. It was held to be a claim for the mechanism. The House Printing Telegraph was held not to infringe. Smith v. Downing et al., 1 Fish. P. C. 64.— Woodbuky, 1850. 21. In a patent for a furnace, it was specified that the gases were to be taken off "at or near that point of the furnace where the limestone employed as a flux is completely calcined, and the reduction or deoxidation has not yet com- menced ;" adding that this point " will gener- ally be at about one third the height of the whole furnace below the tunnel head, or two thirds above the bottom stone." The claim spoke of drawing off the gases at " one or more points below the top of the fuel." Complainant contended that this was to be construed as meaning that the gases were to be drawn off " below the upper level of the charge." Com- plainant's contention was refused, and defend- ants, not coming within the terms of the patent, were held not to infringe. Betmold v. Reeves etal., 4 Am. L. J. 188. -Kane, 1851. 23. When Morse claimed "as the essence of his invention the use of the motive power of the electric or galvanic current, however developed for making or printing characters at any dis- tance, "he described and justly claimed a new art. French et al. v. Sogers et al., 1 Fish. P. C. 133.— Kane, 1851. 23. In Morse's patent for a local circuit, the electric force was derived from a battery outside the main line. Defendants had the same local circuit operated by a battery within the main line. Defendants were held to infringe. — lb. 24. The claim of the patent in suit was to " the application of the expansive and contract- ing power of the metallic rod to regulate the heat of the stove by opening and closing the damper, the whole being self-acting in the admission or exclusion of air." The court held this to be " a claim independent of any particular arrange- ment or combination of machinery or contriv- ance for the purpose of applying the principle to the regulation of the heat of stoves." Foote v. aUsbyetal., 3 Blatch. 360.— Nelson, 1851. 35. Such a patented machine as the Blanchard lathe for turning irregular forms may be applic- able to turning a variety of articles ; and it is an infringement to construct a machine embody- ing the patented improvement, the use of which is restricted to turning one kind of article. Blanchard Y. Beers et al., 3 Blatch. 411. — Nel- son, 1852. 36. In the Goodyear patent for vulcanizing rubber, hot air was described as the agent for the application of heat. Defendant used steam, and was held to 'infringe. Qoodyea/r et al. v. Central B. B. of N. J., 3 Wall. Jr. 356.— Geier, 1853. 37. The claim in Goodyear's vulcanizing pat- ent was : " What I claim as my invention and desire to secure by letters-patent is the curing of caoutchouc or india-rubber, by subjecting it to the action of a high degree of artificial heat, sub- stantially as herein described and for the pur- poses specified. ' ' And I also claim the pi-eparing and curing the compound of india-rubber, sulphur, and a carbonate of other salt or oxide of lead, by sub- jecting the same to the action of artificial heat, substantially as herein described." The court construed this claim to cover both the process and the product. — lb. 38. The claim of the patent in suit was : " What I claim as my own invention and desire to secure by letters-patent is making the body of the car for the transportation of coal, etc., in form of the f rustrum of a cone, ' ' etc. It was held that the car need not be of just the form of the f rustrum of a cone in order to come within this patent. Winans v. Denmead et al., 15 Howard, 330.— Sup. Ct. 1853. 29. Complainant's patented improvement in gold pens was claimed as " reducing or thinning the sides of the pen between the shoulder and the splits, ' ' for the purpose of obtaining elastic- ity. Defendants' gold pen did not have the sides thinned, and had the elasticity given by ham- mering and polishing. Defendants were held not to infringe. Bapp v. Bard et al. , 1 Fish. P. C. 196.— Grier, 1855. 30. A patented improvement in apple-parers consisted in so attaching the knife-block to the rod which moved it as to allow it to rotate around the rod at right angles therewith, and thus the knife accommodated itself to any irreg- ularity in the surface of the apple. Defendants, instead of making the knife thus movable on the rod, made the rod movable in its socket. 114 CONSTEUCTION OP PATENT— SPECIFIC CASES. The knife-block had the same motion, hut in one machine it was around the rod, in the other with the rod. Defendants were held to infringe. Sargent et al. v. Lamed et al., 2 Curtis's C. C. 340.— Curtis, 1855. 31. Although coniplainant's patented device may show a roller for holding down the material operated upon, and although defendant may substitute a spring therefor and thereby get ad- ditional advantages, yet if the spring performs the function of the roller, so far forth it is an in- fringement. Poss V. Herbert, 1 Bissell, 131. — Drtjmmond, 1856. 33. " ' May in fact be ' does not signify ' shall be.' " Page v. Ferry, 1 Fish. P. C. 398.— Wil- KINS, 1857. 33. The patent in suit was for a reaper, and a claim thereof was : " 4th. I claim the combina- tion of the bow L and the dividing iron M, sepa- rating the wheat in the way described. ' ' Of the inventor and of the claim the court said : " If he be the original inventor of the device or ma- chine called the divider, he will have a right to treat as infringers all who make dividers operat- ing on the same principle and performing the same functions by analogous means or equiva- lent combinations, even though the infringing machine may be an improvement of the original, and patentable as such. But if the invention claimed be itself but an improvement on a well- known machine by a mere change of form or combination of parts, the patentee cannot treat another as an infringer who has improved the original machine by the use of a different form or combination performing the same functions. The inventor of the first improvement cannot invoke the doctrine of equivalents to suppress all other improvements which are not mere col- orable invasions of the first." McOormick v. Talcott et al., 20 Howard, 403.— Sup. Ct. 1857. 34. The patent in suit was for a reaper, and a claim thereof was : "4th. I claim the combina- tion of the bow L and the dividing iron M for separating the wheat in the way described." Dividers, broadly considered, were old. Defend- ants used the above combination except that the divider was of a different form, and defendants were held not to infringe. — lb. 35. Complainant's patented wood-bending machine consisted of a stationary form around which timber was bent by means of levers turn- ing upon fixed fulcrums and applied near the end of the timber. The timber to be bent was laid upon a metallic strap having clamps or abutments attached to each end which embraced the ends of the wood, and prevented any stretch- ing of the fibres during the act of bending. These clamps were made to slide upon the levers as the wood was brought around the form. The claims of the patent were as follows : " I claim the clamps 6 6 to prevent end expansion and the levers 7 7, working on fixed fulcrums, when in operation, all substantially as and for the pur- poses set forth in the foregoing specifications. ' ' Defendants substituted radial arms with rollers to press upon the back of the wood, and used clamps which permitted a partial relaxation or stretching of the fibres at the commencement of the bending operation. Verdict for the plain- tiff. Morris v. Barrett et al., 1 Bond, 254. — Leavitt, 1859. 36. ComiDlainant's patent, which had been sustained by the court in a previous suit, was for the use of sheets of tin-foil in vulcanizing rubber placed upon the surface of the article to be vulcanized. Defendant substituted thin sheets of brass therefor. It was not claimed that all plates of metal were equivalents for tin-foil, and as defendant's plate had not the same flexi- bility as complainant's, defendant was held not to infringe. Poppenhusen v. N. T. Gutta Percha Rubber Oomb Go., 4 Blatch. 253. — Ingek- soLL, 1859. 37. A claim of complainant's patent for parti- coloring yarns was : ' ' What I claim as my invention and desire to secure by letters-patent is the method, substantially as specified, of parti- coloring yarns that have been reeled by direct and free immersion by means of frames carry- ing the reeled yarns, ' ' etc. The court held this to be a claim for a combination of the parts de- scribed. Smith et al. v. Siggim it al., 1 Fish. P. C. 537.— Nelson, 1859. 38. The claim of complainant's patent for a reaping machine was for a combination, having as one element thereof a certain ' ' scalloped cut- ter. " Defendants contended that their scallops were of less depth than those used by complain- ant ; thereof the court said : " This is a formal and not substantial objection. The scallops were not required to be of any particular depth, or that the angle they make should be greater or less. This was necessarily left to the knowl- edge and experience of the mechanic. Practi- cal utility was the end to be attained in the use of the scalloped cutter. Some mechanics may prefer one angle, some another. A right v.-hich may be lost by the variation of an angle can be of no value." Hussey v. McGormick et al. , 1 Bissell, 300.— McLean, 1859. 89. In the specification of his patent on a stov*, the plaintiff fully described the character and functions of a certain plate. Tliis plate was not mentioned in the claim, which was for a com- CONSTEUCTION OF PATENT— SPECIFIC CASES. 115 ■bination, but the court placed it there by con- struction, saying : " In giving a construction to a patent, it is the duty of the court to look to the whole specification, to the body of the pat- ent." Vance v. Campbell et al. , 1 Fish. P. C. 483. — Leavitt, 1859. 40. In a patent for a seed sower, the inventor describes a certain kind of motive power and a certain means of transportation. The kind of motive power used was held to be immaterial. Cahoon et al. v. Ring, 1 Clifford, 592. — Clip- ford, 1859. 41. The claim in complainant's patent was : " ' Forming and arranging the teeth of cylinders for hurring wool in such a manner that their outer convex sides shall be substantially con- centric with the axis of the cylinder, for the purpose of seizing and holding the fibres, and presenting a surface against which the guard can act in removing burrs and other foreign matter therefrom.'" Thereof the court said: " Forming and arranging the teeth, within the meaning of the claim, includes not merely their points or projections, but also the plain surface in rear and against which, as stated in the claim, the guard is to act in removing the hurrs^ ' ' Whipple v. Middlesex Co. , 4 Fish. P. C. 41.— Sprasue, 1859. 42. The claim in complainant's patent for a cotton-gin was : " ' Forming and arranging the teeth of cylinders for burring wool, in such a manner that their outer convex tides shall be substantially concentric with the axis of the cylinder, for the purpose of seizing and holding the fibres, and presenting a surface against which the guard can act in removing burrs and other foreign matter therefrom. ' " In complainant's machine the cylinder had a continuous surface from end to end. In defendant's machine it was not continuous, being formed by plates or ■ rings of metal going around the cylinder, placed near to each other, but with some spaob between them. Another mechanical difference was that in defendant's machine the teeth were not in straight lines lengthwise with the cylinder. The third change in defendant's machine was in the edges of the rings, and was effected by the passing of a triangular file around the cylinder between the rings to sharpen the teeth. By these changes a new function was introduced, but the defendant was held to infringe. — lb. 43. The claim in complainant's patent was : " ' Making ladies' bonnet-frames of two thick- nesses of cape lace, substantially as and in the manner specified. ' ' ' The court held this to be a claim for a whole bonnet-frame made in that particular way, and that a bonnet-frame made in parts in the same general manner did not in- fringe. Kidd V. Sperice et al., 4 Fish. P. C. 37. — Ingbrsoll, 1859. 44. The claim in complainant's patent was : " ' The method, substantially as specified,- of parti-coloring yarns that have been reeled by di- rect and free immersion, by means of frames carrying the reeled yarns, and combined with the vat containing the dyeing liquor by means of machinery adapted to let down and draw up the said frame, and measure the extent of immer- sion, substantially as set forth.' " In defendants' device the skeins of yarn were strung upon two poles one above the other, and while thus situ- ated the skeins were clamped by a clamp of wood at thedistance from the bottom desired to be colored. This clamp was attached to a frame independently of the two poles which supported ; it. The poles were then withdrawn and the clamp frajne attached to and carried by a lever oper- ated by machinery to the vat of liquor, and low- ered into it, the clamps which floated determin- ing the immersion. Defendants were held not to infringe. Smith et al. v. Higgins et al., 2 Fish. P. C. 97.— Nelson, 1860. 45. A claim was : " ' The method, substan- tially as described, of regulating the velocity of steam-engines by combining a regulator with a liberating valve gear.' " Thereof the court said : ' ' The claim covers not only the specific arrangement and pombinatiou described, in the specification, but any arrangement and combina- tion for the purpose mentioned which embodies the ideas, principles, and mode of operation of the patentee. ' ' Corliss v. Wheeler & Wil- son M'fg Co., 2 Fish. P. C. 199.— Nelson, 1861. 46. The claim in the patent in suit was : " I claim constructing the wrought-iron fence .sub- stantially as herein described — that is to say, by forming the top and bottom rails and posts of the panelled or grooved bars through which the ends of the wires, by which the meshes arc made, are drawn and the ends turned down into said grooves, and then covered by other similar bars to hold them in place, by which a perfect finish is effected, and the expense and difliculty is avoided." In defendant's device the double grooved bar was not present, and the iron wire was drawn through a hole in the bar and fastened roughly by bending and clinching it without riveting. Defendants were held not to infringe. N. T. Wire Railing Co. v. Walker et al, 2 Fish. P. C. 179.-Grier, 1861. 47. The claim in complainant's patent was : " ' I also claim the employment of the hinged hood [S] to regulate the distribution of the 116 CONSTKUCTION OP PATENT— SPECIFIC CASES. fibres on the perforated cone or other former, as described. ' ' ' And I also claim providing the lower part or delivery aperture of the tunnel or chamber with a hinged flap [g], for the purpose of regu- lating the delivery of the fibres to increase the thickness of the bat where more strength is re- quired, as herein described, in combination with the hood, as herein described.'" Defendants substituted a rapidly revolving picker for the brushes of complainant's patented machine, and in front of this placed a short curved guide-plate or hood, by means of which the fibres were di- rected to any part of the cone. Defendants used the cone which was common to complainant's machine and two prior machines, but dispensed entirely with the trunk or curve employed by complainants, as intermediate between the picker and the cone. Defendants were held not to in- fringe. Burr V. Diiryee et al., 2 Fish. P. C. 275.— Gribr, 1862. 48. The claim in a patent was : " What I claim as my invention is the manufacturing of fat acids and glycerine from fatty bodies at a high temperature and pressure." In defend- ant's mode of operation the fatty substances were placed in a tank closed at the top to retain the heat and steam, with six to seven pounds of lime and one hundred and thirty pounds of water to every one hundred pounds of fatty matter ; heated steam was introduced which, in connection with the action of the limo and water, produced a lime soap, and set the glycer- ine free in five hours after the operation was begun ; the lime soap was afterward decom- posed by the use of sulphuric acids, and the fat acids became free. Defendant was held to in- fringe. Tilghman v. Werk, 1 Bond, 511. — Leavitt, 1863. 49. Complainant's patent was for " producing .smooth and glossy surfaces upon the hard com- pound of caoutchouc and other vulcanized gums, by means of the use of oil or other equiva- lent substance applied to the surface of the pre- pared gum and the plates of metal or moulds, substantially as therein described. ' ' Defendants used for this purpose spirits of turpentine, with a small quantity of rubber dissolved in it. De- fendants were held to infringe. Poppenliusen V. Falke et al., 5 Blatch. 46.— Shipman, 1862. 50. The claim in Rollin "White's patent for a breech-loading revolver was : " ' Extending the chambers aa, of the rotating cylinder A, right through the rear of said cylinder, for the pur- pose of enabling the said chamber to be charged at the rear, either by hand or by a self-acting charger, substantially as described. ' " Defend- ants' revolver differed from plaintiffs' in that the chambers were bored cylindrical, answering the purpose of the conical chamber. Defend- ants were held to infringe. WIdte et al. v. Boker et al., 3 Pish. P. C. 66.— jSrBLSON, 1863. 51. The claim in complainant's patent was : " ' The process of hardening steel wire, or thin steel, in long sections, being kept under a longi- tudinal strain by means of the wheels D D, while passing through the fire in the furnace C, the guide H, to conduct the wire directly from the fire into the hardening bath, in combination with such hardening bath, as specified.' " Thereof the court said : " It covers the peculiar method which the mechanism carries out, and any mechanism which is equivalent to that de- scribed in the patent. " Waterman Y. Thompson et al., 2 Fish. P. C. 461.— Shipman, 1863. 52. The claim in complainants' patent was : " A sewing-machine constructed and operating to form a seam, substantially as described." Thereof the court said : " The claim is for the organized machine as an existing wlwle, and not merely for some or all of the separate devices of which it is composed, or for some or all of those devices as a mere technical combination. ' ' Howe V. Williams, 2 Clifford, 245.— Olifpohd, 1863. 53. The claim in complainants' patent was : " ' What I claim as my invention and desire to secure by letters-patent is the use of a solution of caustic soda [NaO] in a compartment of n rotary vessel, separate from that which contains the steam heat, substantially as described.' " Of this the court said : " The claim cannot bo held to extend beyond the use of a vessel with separate compartments for the material to be heated and for the steam heat used in the proc- ess, substantially as specified. Such a vessel the defendants do not use, and, therefore, do not infringe the first claim of the patent." Bu- chanan V. Howland et al., 5 Blatch. 151. — Hall, 1868. 54. The claim in complainant's patent was : " ' I also claim the within-described process for bleaching straw, consisting in boiling it in a solution of pure caustic soda [NaO] 3° to 3° Baume, at a temperature of not less than 310° Fahrenheit, after it has been soaked and cleansed, and before submitting it to the action of chloride of lime, from 1 to 1\°, substantially as de- scribed." The court said that this claim was broad enough to cover the actual discovery and invention irrespective of the particular form or construction of the vessel in which the boiling process might be carried on. Again, " The phrase ' not less than ' fixes a minimum limit, without regard to a maximum."— /ft. CONSTRUCTION OF PATENT— SPECIFIC CASES. 117 55. The claim of the complainant's patent was : " I claim the mode of bending the rod and placing it in its proper position between the swageing dies, as above set forth." This was construed to be a claim to the mechanical device used in practising the mode. Burden v. Corn- ing et al., 3 Fish. P. C. 477.— Nelson & Hall, 1864. 56. The claim in complainant's patent for knitting-machine was : " Combining the web- shaping plates S and C with the take-up mechanism, substantially as described and for the purpose set forth. ' ' Thereof the court said : " It must be understood to embrace the connec- tion of the moving plates with the take-up mechanism, and their operation together in the peculiar manner set forth." The only impor- tant difference between the arrangement and the operation of those plates in complainant's and respondent's machines was that, in the former, they were fixed to the rod or spindle and were revolved by the gear which carried it, while in the latter the spindle to which they were at- tached were turned freely and without gearing. The court held this to be merely a mechanical equivalent, and held defendants to be infringers. Tompkins v. Qage et al., 5 Blatch. 268. — Ship- MAif, 1865. 57. The claim in complainant's patent was : " ' I claim, etc., first, pressing the whole bon- net-frame or similar article at one operation by dies, substantially as specified, whether formed of one or of several pieces, and irrespective of the particular size or shape. I also claim form- ing the side-crown and flaring face-piece of a bonnet-frame in one piece or at one operation, as specified." Thereof the court said : "The whole scope of the language of the specification, as well as the claim, shows that the means used and re- lied on by the patentee for forming the shape of the bonnet is pressure upon the whole sur- face by means of the face of the two dies." DouUeday ct al. v. Braelieo, 2 Fish. P. C. 560. — Nelson, 1865. 58. Complainant's patent was for an improve- ment in shoe lasts, and a claim thereof was : " "What I claim and desire to secure by letters- patent is the sectional shoe last [a, b, c], formed in the manner specified, with the measurement 4 [which is the line drawn across the last from the corner of the toe to the back of the heel, at the upper part] as short as the measurement, at the line 6 [which is drawn around the base of the last from the corner of the toe to the centre of the heel, at the juncture with the sole], for the purposes as specified." Defendants sought to escape infringement on the ground that they made their sole lasts of two sections not as de- scribed in complainant's patent. Respondents were held to infringe. Mahie et al. v. Haskell etal., 2 ChEf. 507.— Clifford, 1865. 59. Complainants' patent in suit was for the four-motion feed of a sewing-machine, with the feeding device mainly under the cloth. De- fendants had substantially the same device over the cloth, and were held to infringe. Potter et al. V. Selienck et al., 1 Bissell, 515. — Dktjmmond, 1866. 60. Complainants' process patent had two claims, in one of which a certain temperature was specified as essential. The inventor was not a pioneer in the art. Defendant used a less temperature, and was held not to infringe. American Wood-Paper Co. v. Ileft et al. , 3 Fish. P. C. 316.— Gbieu, 1867. 61. The claim in complainants' patent was : " The constructing hoops intended for ladies' dresses, substantially as and for the purposes set forth, consisting of a spiral form of any proper material, metallic or vegetable, as described, with or without a core to support the same, which can be bent into the form of a hoop and inserted into ladies' skirts, as hereinbefore fully made known." In defendants' structure the body of the hoop was made of a plain strip of steel wound spirally with wire, the steel strip being the principal thing. Defendant was held not to infringe. West v. Sillier Wire and Skirt M'fg Co., 5 Blatch. 477.-Shipman, 1867. 63. The claim in complainants' patent for a machine for surface sizing fibrous material was : " The employment or use of a heated metallic cylinder B, or one having a metallic exterior or periphery, in combination with a heated jjres- sure cylinder, one or more, and a polishing roll- er G, or its equivalent, arranged as shown, for the purpose of surfacing and drying simultane- ously, or at one operation, fibrous materials, as set forth. " Respondents used in place of the heated pressure roller a common solid wooden cylinder, and were held not to infringe. Fi.iz- zard Wadding M'fg Co. v. Dickinson ct al., 6 Blatch. 80.— Shipman, 1867. 63. The claim in complainant's patent for locks was : " ' In combination with a pack or series of tumblers set separately and in succes- sion, I claim a vibrating fence and bolt, and a proper stop against which the fence may abut, the whole being and operating substantially as set forth.'" Thereof the court said: "The terms ' set separately and in succession, ' as used in the second claim of complainant's patent, as well as similar words in the body of the speci- fication, refer not merely to their separate and 118 CONSTEUCTION OF PATENT— SPECIFIC CASES. successive movement, but to their separate move- ment and adjustment, under tlie exclusive con- trol of the operator, to combinations resting en- tirely in his discretion. ' ' Tale & Oreenleaf M 'fg Go. et al. V. North, 5 Blatch. 455.— Shipman, 1867. 64. The Nelson Goodyear patent for hard rub- ber stated the proportions of the mixture used to be "about from four ounces to a pound of sulphur to a pound of rubber. " The court un- derstood this ' ' as meaning any proportion of sulphur between four ounces and a pound, to a pound of rubber. " Goodyear et al. v. Waite, 5 Blatch. 468.— Nelson, 1867. 65. The claim in complainants' patent for im- provement in horse-rakes was : " ' Arranging rake-teeth on articulating, tubular, laterally- bracing and vertically-supporting eye-bearings, 80 that the attaching end of each tooth shall cross or intersect a vertical plane passing longi- tudinally through the axis of the bearings, sub- stantially as described. ' " Defendant's machine dififered from complainants' patented machine in that in the former the teeth articulated upon an axis placed over the axle of the moving hay rake. The horse was somewhat differently at- tached to the machinery, and instead of the operator pressing and bearing down or up by his hand he did it by his foot. Defendant was held to infringe. Hoffheina et al. v. Brandt, 3 Fish. P. C. 218.— Giles, 1867. 66. The claim in a patent on knitting-needles was : " ' What I claim as my invention is the application of a latch or tongue applied to the hook of the needle, and operated as herein de- scribed. ' " Thereof the court said: " If the knowledge of latch-needles of the primitive form had been universal or even general among those best acquainted with the use of knitting-ma- chines, the declaration that he constructed his needle in the general form shown in the draw- ings might, perhaps, have sufficed to restrain the claim to the specific improvement in the curved needles exemplified in the form with a swell, and including, of course, other curvatures of equiva- lent effect. But this interpretation is morally inadmissible. According to the proofs of the state of the art at that period, the knowledge of the primitive latch-needle, though quite sufficient to defeat a subsequent patent, was very limited — so limited as to exclude all possibility of the inference of any general knowledge on the subject. The patent is therefore broader than the actual novelty of the invention." Aiken v. Dolan, 3 Fish. P. C. 197.— Cadwalader, 1867. 67. The Nelson Goodyear hard rubber patent of May, 1851, stated : " The proportions specified of both these compounds may be considerably varied without materially changing the result, but in no case will a much less quantity of sul- phur than four ounces to every pound of caout- chouc .be sufficient." Thereof the court said : " There is no foundation for the suggestion that the patentee is limited to a quantity of sulphur not exceeding one pound of gum, or that a quantity of sulphur as great as twenty-two ounces to a pound of gum is not within the claims of his patents, provided the substance produced has the qualities of the substance re- ferred to in his patents." Goodyear et al. v. Mullee et al., 5 Blatch. 429. — Blatchpobd, 1867. 68. The claim in a patent was : " ' Locating the spring of a snap-hook, substantially as shown and described, so as to act upon points interme- diate between the hinge and hook proper, in com- bination with forming recesses for holding the spring, as set forth.' " Thereof the court said : "The statement in the claim that locating the spring in the manner described is combined with forming the recesses is mere absurdity. But a glance at the specification and drawings shows at once what was really meant." Middletown Tool Go. V. Judd etal., 8 Fish. P. C. 141.— Ship- man, 1867. 69. Nelson Goodyear 's patent on hard rubber specified the minimum amount of sulphur to be used. Defendant used a less amount of free sulphur, but used in addition thereto a quantity of vulcanized oil which contained sulphur. The vulcanized oil alone would not vulcanize the rubber, neither would the amount of free sul- ' phur used by defendant alone vulcanize the rubber, but both together would. Defendant was held to infringe. Goodyear et al. v. Rust, 6 Blatch. 229.— Shipman, 1868. 70. Nelson Goodyear's patent on hard rubber was practically for the use of sulphur in the vulcanizing process. Defendant first put the sulphur into another compound for the ijurpose I of making the final product odorless. Defend- I ant was held to infringe. Goodyear et al. v. j Berry, 2 Bond, 189.— Lbavitt, 1868. I 71. The claim of the Nicholson Pavement Pat- j ent was construed to be for a combination of I two elements, the foundation and the blocks. Defendant did not use the foundation, and was held not to infringe. Nicholson Pavement Co. V. Hatch et al., 4 Sawyer, 692.— Field, 1868. 72. Nelson Goodyear's patent of May 6th, 1851, was for vulcanizing hard rubber by the use of sulphur and heat. Defendant's patented process was for incorporating the sulphur in a certain compound previous to the vulcanization. CONSTRUCTION OF PATENT— SPECIFIC CASES. 119 to make the product odorless. Defendant was held to Infringe. Goodyear Dental Vulcanite Go. et al. V. Emm, 6 Blatch. 121. — Blatch- FOKD, 1868. 73. In complainant's patent for wood-splitting machine, the claim specified the cutters as oper- ating at right angles to the bed or carriage. In respondents' machine the cutter operated not at right angles to the carrying-bed, but in a hori- zontal position to it. Defendants were held to infringe. Canover v. Dohrman et al., 6 Blatch. 60.— Shipman, 1868. 74. A process patent described the use of a temperature of from two degrees to three degrees. Defendants' temperature was proved to be less than three and one half degrees, and defendants were held to infringe. Am. Wood-Paper Co. v. Fibre Disintegrating Cq., 6 Blatch. 27. — Bene- dict, 1868. 75. Complainants' patent, being for a process of treating straw in the manufacture of paper pulp, was held to cover an application of the same process to the treatment of bamboo. — Ih. 76. The patent in suit was for a harvester, arid a claim thereof was : " ' The hanging of the driving-wheel in a supplemental frame, or its equivalent, which is hinged at one end to the main frame, while its opposite end may be ad- justed and secured at various heights or be left free, as desired, whereby the cutting apparatus may be held at any given height for reaping, or be left free to accommodate itself to the undula- tions of the ground for mowiQg, as substantially described.' " In defendant's machine there were two frames, the main and .secondary, the one supporting the cutting apparatus and the other the driving-wheel, hinging the two frames together in such a way that the driving-wheel and cutting apparatus might each follow the in- equalities of the ground independently of each other, and also be bolted rigidly together for supporting the cutting apparatus at any fixed height. Defendant was held to infringe. White- ly V. Kirby, 11 Wall. 678.— Sup. Ct. 1868. 77. The patent in suit was for a soda-water fountain, and a claim thereof was -. " The em- ployment of reservoirs in permanent cases or stands, revolving or otherwise, as herein de- scribed, with the registering faucets, substan- tially as and for the purposes herein set forth. " The court held a certain vent which was not mentioned in the claim was to be an essential part of the faucet, and as defendant's device did not have this vent, defendant was held not to in- fringe. Bigelow v. Matthews, 7 Blatch. 77.— Blatchpord, 1869. 78. The claim of the patent in suit was : "The employment, in combination with the beedle of a sewing-machine, of a plate K, constructed and operating substantially as herein shown and de- scribed, for the purpose of laying and holding braid, gimp, or other material upon the surface of ' the fabric, as set forth." This claim was ' ' construed as claiming the employment, in com- bination with the needle of a sewing-machine, of a separate detachable plate, constructed and operating substantially as shown and described in the patent, for the purpose of laying and holding braid, gimp, or other material, upon the surface of the fabric, as set forth, as contradis- tinguished from the employment, in such com- bination, of a guide not formed in a separate detachable plate. " Defendant's device did not have a plate constructed and operating substan- tially like that of the patent, and was held not to infringe. Dibble v. Augur, 7 Blatch. 86.— Blatchfokd, 1869. 79. A claim in complainant's patent on hose coupling was : " ' The two thimbles C, D, at- tached to the ends of the hose A, B, the thimble C being provided with the shoulder b, and ground seat or packing c, and the thimble D provided with the groove e with inclined sides and fitted within thimble C, the above parts be- ing used in connection with conical roller or rollers g, fitted in the screw caps i, and the whole arranged to operate as and for the pur- pose set forth. ' " Defendants' coupling had two thimbles, one with the seat and the other with the circumferential bevelled groove, but instead of the conical roller had a non-rotating pin with a conical face. Defendants were held not to infringe. Bliss v. Ilaiglit et al., 7 Blatch. 7. — Blatchpord, 1869. 80. A claim of complainant's patent on hose coupling was : " ' The lug G within the butt A, when used in connection with the pin P and the groove g of the butt B, substantially as and for the purpose set forth. ' " It was held that the "pin F " must be a rotating pin in order to infringe. — lb. 81. A claim in complainants' patent was : "The application to portable engines of a hol- low continuous bed-plate, in the manner sub- stantially as described, for the support and at- tachment of the operative parts of the engine, whereby the latter, in working, is rendered in- dependent of the contraction and expansion of the former, and the boiler relieved from the di- rect strain of the engine, as set forth. " Thereof the court said . " We think the context claims for the patentees as their invention : 1. A hol- low continuous bed-plate placed between the boiler and the engine. 2. The bed-plate to have 120 CONSTRUCTION OF PATENT— SPECIFIC CASES. flanches on Its upper and outer side cast with it. 3. The attachment and securing of the operative parts of the engine upon its upper and outer side, by means of the flanches." Defendants' bed-plate and defendants' attachment being in all respects like those of complainants', except a certain longitudinal opening in the bed-plate, defendants were held to infringe. Blandy et al. V. Griffith et al., 3 Fish. P. C. 609.— Swayne, 1869. 83. A claim in complainant's patent was : "A whip having the handle or any portion covered with a knit fabric, substantially as herein de- scribed. " The patentee knit his fabric in a tubular form and then put it upon the whip- handle. Defendants knit their fabrics by ma- chinery in flat strips, and looped the strips to- gether upon the whip-handle. Defendants were held to infringe. Strong et al. v. Noble et al., 6 Blatoh. 477.— Blatchford, 1869. 83. The claim in complainant's patent was : " ' The new manufacture of skeleton skirt, sub- •stantially such as described, consisting of a series of tapes woven in the direction of their length in alternate sections, as single and double tapes, with the hoops inserted in the loops formed by weaving the tapes as double tapes, and there secured to prevent the tapes from slid- ing laterally on the hoops. ' ' ' Defendant sought to escape infringement by leaving out the threads of filling in one or both of the two portions of tape which formed the loop. Defendant was held to infringe. Doughty v. West et al. , 6 Blaf ch. 439.— Blatchford, 1869. 84. A claim in complainants' patent was : " ' In automatic wool-oiling machinery, we claim the combination of a tank or reservoir with a dipper or equivalent mechanism for performing the double functions of stirring or agitating the oil or lubricating matter in the tank, and of lift- ing therefrom at each time a quantity of oil or lubricating matter requisite for one oiling opera- tion, and this is claimed only when arranged for operation as described — that is to say, so that the said dipper .shall not come in contact with the wool, subsitantially asset forth.'" Of the differences between the complainants' and de- fendants' machine, the court said : " The only difficult question is, whether the operation is performed substantially in the same way. In the plaintiffs' machine the dipper is immersed by its own gravity, and is raised by the action of the incline or lifting shoe operating directly on the pin in the vertical rod. In the defend- ants', the dipper is immersed by the operation of the incline on the revolving cam, through the , medium of the curved arm, strap, and pulley on the end of the shaft, and is raised by the force of the spring on the shaft bearing on the side of the tank. The same result is reached in both cases, and I am of the opinion that the defend- ants' mechanism is substantially an equivalent for the plaintiffs', and infringes." Harwood et al. V. Mill Biver M'fg Co., 3 Fish. P. C. 536.— Shipman, 1869. 85. Complainant's claim was : '"Preserving fish or other articles in a close chamber by means of a freezing mixture, having no contact with the atmosphere of the preserving chamber, sub- stantially as set forth.'" Thereof the court said . " The claim appears to the court to de- scribe clearly and in language incapable of mis- construction what is claimed as the new and useful art or method." Piper \. Broljon et al., 1 Holmes, 30.— Shbplby, 1870. 86. The claim in complainant's patent for im- proved dust deflectors for windows of railroad cars was : " I claim the rotary deflector or venti- lator, constructed and made to operate substan- tially in the manner and for the purpose speci- fied." The deflector was reversed by rotating it half round the axis of the circular orifice by means of a joint. In defendants' device the reversal was produced by a partial rotation about a vertical axis, the two halves of the deflector upon the sides of the axis being symmetrical. Defendants were held to infringe. Cooh v. How- ard et al., 4 Fish. P. C. 369.— Clifford, 1870. 87. The claim in complainant's patent was : " ' The said manufacture of printing type, made substantially as described — viz., by the combined process of stamping the letter or figure from a I plate or piece of metal, and subsequently reduc- i ing the same in the manner and for the purpose I set forth. '" Complainant's improvement con- j sistod in first raising the printing surfaces from a thin sheet or piece of metal by means of one or more dies, and afterward planing, filing, or re- ducing the raised surfaces so as to remove round edges and produce an even, flat, and defined surface. Defendants heated their blank red hot, put it into the die, and then a blow was brought upon it with force enough to make the metal flow laterally into the die. Defendants, inci- dentally only, sometimes did some filing, but not generally. Defendants were held not to in- fringe. Hudson V. Draper et al., 4 Cliff. 178. — Clhtford, 1870. 88. The claim in complainants' patent was ; " ' The plate of hard rubber or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described. ' ' ' There- j of the court said : " Taken literally, the claim I is for the product as manufactured ; but when CONSTEUCTION OF PATENT— SPECIFIC CASES. 121 the introductory -words are considered in con- nection with the words ' substantially as de- scribed, ' it is clear that it includes not only the plate of hard rubber for holding artificial teeth or teeth and gums, but the process or mode by which they are constructed." Goodyear Dental Vulcanite Go. et al. v. Gardner, 3 ClifE. 408. — Clifford, 1870. 89. The claim of the patent in suit was : "Softening the upper parts of paper-bags and making them pliable, substantially as and for the purpose above described." The court held that " it is not softening and making flexible, as a result of some or any means whicli can be suggested, that is the subject of the patent ; but it is the improved bag, as a result, which the patent is intended to protect. The improved bag is the result." Defendant made and sold a bag crimped, softened, and made flexible at the upper end, where a string was to be applied, and was held to infringe. Arkell et al. v. J. M. Hurd Paper-Bag Co., 7 Blatch. 475. — Wood- KUFF, 1870. 90. The patent in suit was for hose couplings, and the claims thereof were : "1. The combi- nation of the two thimbles C and D, by means of a pin, operating longitudinally through the outer thimbles C, and against the inclined side of the groove in the thimble D, so that the thim- bles will be forced together by the inward move- 1 ment of the pin, and be liberated by its outward movement, substantially as described. 2. The side of the groove in D nearest to the joint to be formed, or the flanch constructed with an in- cline, substantially as described." Defendant's device was the same as complainant's device, ex- cept the feature of the rotation of the pin when not disconnected from the thimble. Defendant was held to infringe. Bliss v. Gaylord Patent Coupling & M'fg Co., 7 Blatch. 279.— Blatch- FORD, 1870. 91. The claim of the patent in suit was : "The employment, in combination with the needle of a sewing-machine, of a plate K, constructed and operating substantially as herein shown and de- scribed, for the purpose of laying and holding braid, gimp, or other material upon the surface of the fabric, as set forth. " It was held to be restricted to a " separate, detachable plate, but could not extend to a detachable braiding guide arranged in connection with the presser-foot of a sewing-machine." The operating guide of defendants' device did not have a separate de- tachable plate — one formed in and as a part of the presser-foot— and was held not to infringe. Dibble et al. v. SibUy et al., 7 Blatch. 309.— Blatchford, 1870. 93. The claim of the patent in suit was : "The application to a shade-roller, provided with a spiral spring for automatically raising or rolling up the shade, of a pawl and ratchet, or notched hub, so arranged that the former will engage with the latter, at any point or height of the shade, by simply checking the rotation of the roller and the upward movement of the shade under the influence of the spring, substantially as set forth." In defendant's shade fixture there was a roller, provided with a coil or spiral spring secured within. Instead of complainant's hub, with two notches on the roller, defendants had a scroll hub, with one notch or rebate fixed to the bracket ; in place of the pivoted pawl of complainant's, defendant had a pin or bolt slid- ing in a socket at the end of the roller. Defend- ants were held to infringe. Hartshorn v. Tripp etal., 7 Blatch. 130.— Blatchi'ORD, 1870. 93. A claim of the patent in suit was : "A wire staple, adapted for use in making window blinds or screens, and constructed substantially as above described." This was construed to mean "not only staples of such a shape that they can be readily inserted into wood and with difficulty be withdrawn from it, but staples made into such a shape by the action of dies, which form the corrugations by swageing ;" and to cover a staple that did not have its corrugations deeper near the piercing point than further therefrom ; that did not taper in thickness toward the point ; that did not have indentations of equal depth over the whole surface indented, and that did not have the shallowest indentations toward th(^ point. Rogers et al. v. Sargent et al., 7 Blatch. 507.— Blatchford, 1870. 94. The patent in suit was for fastening clasps and hooks on the tapes of hoop-skirts, and a claim thereof was : ' ' The combination of the hoop-rest, a clasp-feeder, a clasp-supplier, and a moving clasp-carrier, the combination, as a whole, operating substantially as set forth." Defendant's machine did not have what was substantially a slide moving in guides, and was held not to infringe. Wilcox v. Komp, 7 Blatch. 126.— Blatchford, 1870. 95. The patent in suit was for a harvester, and a claim thereof was : "The method of hang- ing the reel so as to dispense with any post or reel-bearer next to the standing grain, as herein described, thereby preventing the grain from getting caught and being held fast between the divider and a reel supporter. ' ' The defendants' machine had but one post. The reel axle, how- ever, was prolonged, and it was supported wholly on that side or end of the reel, and by means of two bearings attached to that post. 122- CONSTEUCTION OF PATENT— SPECIFIC CASES. Defendant was held to infringe. Seyirww^. Os- borne, 11 Wall. 516.— Sup. Ct. 1870. 96. The patent in suit was for an improve- ment in the mode of huilding piers for bridges, etc., and a claim thereof was : " Building and setting piers by means of a floating coffer-dam, substantially as set forth." Of this claim the court said : " The claim is for the instrument or device denominated a floating coffer-dam, sub- stantially such as described in the specification, to be used in building and setting piers. ' ' Bail- road Co. Y. Dubois, 12Wall.47.-Sup. Ct. 1870. 97. The patent in suit was for an improve- ment in building piers for bridges, etc., and the second claim thereof was : "The use of the tube which constitutes the dam for encasing and strengthening the pier, substantially as set forth." The court construed this claim to be for the use of the tube or material of which the dam was made, for encasing and strengthening the pier, no matter whether it were first placed in position entire, or built in sections as the masonry progressed. — rb. 98. The patent in suit was for a mode of building piers for bridges, etc., and a claim thereof was : " The guide-piles [AA] in com- bination with a coffer-dam, substantially as and for the purpose set forth." This claim was construed as follows : " The third claim of plaintiff's patent is for the combination of a floating coffer-dam, as claimed in the first claim, with guide-piles, which are driven into the bot- tom of the river, around the site of the proposed pier, and reach above the surface of the water, and pass through holes in the platform, and have their tops framed together with ties ; when the pier is building they are to sustain up- right the tube with its pier inside, and to guide it down to its foundation prepared at the bottom of the river ; when the pier is finished they are then to be cut off just above the top of the plat form, and their stumps left to prevent any lateral movement of the platform and the pier on its foundation. ' ' — lb. 99. The patent in suit was for the Blake crusher, and the claims were: "1. The com- bination, in a stone-breaking machine, of the up- right convergent jaws with a revolving shaft and mechanism for imparting a definite re- ciprocating movement to one of the jaws from the revolving shaft, the whole being and operat- ing as set forth. 2. The combination, in a stone-breaking machine, of the upright movable jaw with the revoldng shaft and fly-wheel, the whole being and operating substantially as set forth." The jaws of the Blake machine were straight and vertically corrugated ; the jaws of defendant's machine were curved and smooth. Blake used a toggle between the crank and the movable jaw ; defendant used a rod and lever. Defendant was held to infringe both claims. Slake V. Eagle Works M'f'g Co., 3 Bissell, 77. — Dkummond, 1871. 100. The claim in complainant's patent for fluting- machine was : " ' The guide E, con- structed with one or more curved or arched portions a, in combination with suitable fluting rollers, substantially as herein set forth, for the purpose specified.' " Defendant's machine was described as having two rollers furnished with smooth, narrow annular portions, and with grooved and fluted portions, as in the plaintiff's machine. But instead of having smooth cylin- drical portions to form, in connection with the arched guide exterior to the rollers, the crinkled part of the puffing, the defendant had trans- ferred the arched guide to one of the rollers by placing thereon, on the portion between the flut- ing instrumentalities on that roller, knobs or buttons forming a series circumferentially around the roller, and having between each two of them a depression. Defendant was held to infringe. Kiv^ v. Manndelbaum, 8 Blatch. 468. — Blatohford, 1871. 101. The claim in complainant's patent was for " making nuts by subjecting them, at a welding heat, to compression between swages in a die-box, and punching the eye during the press- ure to remedy any imperfections in the iron, and prevent the injury which might arise from the punching process, if the sides were not thus sustained and compressed at the time of its per- formance. " The mechanism of this patent sub- jected the nut blank, while at a welding heat, ' to compression in a close-fitting die-box, and then punched it while under pressure. In defend- ants' machine " the nut blank was cut off and forced into a matrix and against a female die, which retreated, allowing the punch to enter the iron. The movement of the male die being somewhat more rapid than that of the female die, compressed the nut." Defendant was held to infringe. Wood et al. v. Cleveland Boiling Mill Co., 4 Fish. P. C. 550.— Swayke, 1871. 103. The claim in complainant's patent was : "1. The application of means to the instrument by which the air may be agitated to produce a tremulous note, substantially as described." Complainant's method of applying the principle of external agitation to the production of the tremolo consisted in the introduction of a re- volving or swinging fan, vane, or beater into the instrument in such a position that when it was put in motion the blows upon the air of the CONSTEUCTION OF PATENT— SPECIFIC CASES. 123 rapidly moving fan imparted to the notes, with- out impairing the continuity, a tremulousness similar to the tremolo of the voice. Defendants used a hollow, rotating cylinder with a hori- zontal axis having two openings in it opposite, to each other, and extending from end to end of the cylinder. Defendants were held to Infringe. Hitchcock et al. v. Ti'emaine etal., 8 Blatch. 440. — Blatchford, 1871. 103. The claim in complainant's patent was to "so forming and constructing the shuttle-driver of a lock-stitch sewing-machine, that while it performs the required duty of driv- ing the shuttle, it serves to maintain the latter In the desired proximity to the guide-plate, as described hereafter." Thei'eof the court said: ' ' Considered with reference to the whole speci- fication and the Patent OfBce model, it imports a claim for a shuttle-driver constructed with a surface upon which the shuttle rests, and is car- ried with the driver in its oscillation, and formed with a bevel in this surface, whereby the shuttle by its own weight or gravity is caused to im- pinge upon the surface plate. ' ' Parliam v. Am. B. 0. and Sewing Mach. Co. et al., 1 Pa. Leg. G. Rep. 145.— McKennan, 1871. 104. The claim in complainant's patent was : " ' The use and application of glue, or glue composition in the tubing, substantially as de- scribed, for the purpose of malsing the flexible tubing gas-tight, whether of cloth or rubber, or other gum.' " Defendants' flexible gas tubes were made by the use of glue and glycerine in connection with animal intestines. The prior art showed the intestines as a known equivalent for the flexible rubber tubes. Defendants were held to infringe. Taylor v. Archer et al., 8 Blatch. 315.— Blatchford, 1871. 105. The claim in complainant's patent was : " The composition I prefer for this purpose con- sists of about four parts of Wane fix, one part of white wax, and a trace of ultramarine to give the required tint. " In order to make his enamel- led paper collars he had to improve upon the paper and the enamelling. For enamelling he used blanc fix, white wax, and a trace of ultra- marine. Defendants used for enamelling blanc fix, glue, wax, and soap ; also another composition of satin white, glue, stearine, and alum. Defend- ants were held to infringe. Hoffman v. Aron- aon et al., 8 Blatch. 324.— Blatchford, 1871. 106. The patent in suit was for a cultivator, and a claim was : " But what I claim as new in my invention and desire to secure by letters- patent is : 1. The inclined shovel mould-board B, formed and mounted substantially as de- scribed, and constructed highest at its outer edges, so as to form on each side of the standard A a recess C, through which recess a portion of the earth may, after rising upon the mould- board, descend into the furrow in the rear of the plough." The court held this to be a claim for the mould-board, and not for a combination of which the mould-board formed a part. Ben- nis V. Sddy et al, 4 Fish. P. 0. 433.— Wood- ruff, 1871. 107. The patent in suit was for a cultivator, and a claim was : "3. The combination with the beam A, and mould-board B, of the adjust- able wheel F, arranged and operating substan- tially as and for the purposes specified." De- fendants used a shoe in place of the wheel, and were held not to infringe. — lb. 108. Complainants' patent for spinning up brass kettles was substantially automatic. De- fendant's machine differed therefrom in that a part of the process was governed by the hand of the workman. Defendant was held to in- fringe. Waterhury Brass Mo. v. A. Miller & Co., 9 Blatch. 77.— Woodruff, 1871. 109. The claim in complainant's patent for improvement in refrigerators specified ' ' an air- tight metalHc floor. ' ' Defendant's floor was not strictly air-tight, for it had a gutter between the air-tight floor and the wall, but was held to be in substance the thing patented. Chicago Fruit House Co. V. B%isch et al., 3 Bissell, 472. — Blod- GETT, 1871. 110. For an example of strict construction given to various claims of reissued patents for improyements in corn planters, and under such strict construction defendants held not to in- fringe, see — . Brown v. Selby et al. , 3 Bissell, 457. — Drummond, 1871. 111. The claim in complainant's patent for smut-mill and separator was a combination claim, including as one element a " smutter or scourer." In view of the state of the art, this was limited by construction to mean a tight smutter or scourer ; and as defendant used an open smutter or scourer, defendant was held not to infringe. Knox v. Murtha et al., 9 Blatch. 205.— Benedict, 1871. 113. Where a patent for a composition of mat- ter states the proportions of the ingredients used approximately in connection with such a state- ment as : " ' It is not intended to confine the patent to the use of the ingredients specified, as those proportions may, in some cases, be ad- vantageously varied ;' " "exact conformity to these proportions is not required, because they are stated as approximate, and the right is claimed to vary them. But this right is not un- limited. It can only extend to any adjustment 124 CONSTRUCTION OP PATENT— SPECIFIC CASES. of proportions ■wliicli will result in the produc- tion of a substance possessing the peculiar prop- erties attributed to the substance described in the patent. Substantial identity of result is the test of substantial conformity to the mode of combination in the specification." Francis et al. V. Mellor et al., 8 Phil. 157.— McKbnnan, 1871. 113. The claim in complainant's patent was : " The employment of the pistons D, D, formed at their upper ends into moulds for the tips of | the candles, in combination with stationary candle moulds to throw out the candles in a vertical direction, substantially as herein set forth." In defendants' machine the piston was flat, and moulded the candle with a flat end in- stead of with a convex tip. Defendants were held to infringe. Thayer et al. v. Wales et al. , 9 Blatch. 170.— Benedict, 1871. 114. The claim in complainant's patent was : " A bonnet, cap, or other head covering, the body of which is made of two or more thick- nesses of muslin or other suitable fabric, shaped or formed with a series of raised or embossed strips in imitation of straw or other braid, by means' of suitable dies, in the manner herein set forth." Thereof the court said: "The Blake patent, in order to be upheld as a valid patent, must be construed to be limited to a hat in which the embossing is made directly on the muslin, without the intervention of any coating, the re- quired stiffness being given by the embossing itself, without the use of a coating, and the hat being lighter by reason of the absence of the coating. On tliis construction the patent is valid ; but as the defendants use a coating, they do not infringe it." Upon a rehearing with further testimony, the court construed the claim differently, and as follows : ' ' The proper con- struction of the claim of his patent is, that it claims a bonnet, the body of which is embossed in imitation of straw or other braid, by dies, which at the same time give to it its ultimate shape, such body being, made of two or more thicknesses of muslin or other suitable fabric united by starch or other suitable adhesive and stiffening substance," and thereupon defendants were held to infringe. Baldvrin et al. v. Schultz et al., 9 Blatch. 494. — Blatohford, 1871. 115. The claim in complainant's patent was : " 1. The combination with the cylindrical- formed barrel A, of the stem F, having the re- acting spring G- attached to it, and operating on the outside of the barrel, as hereinbefore de- scribed and for the purposes set forth." De- fendants' speaking tube had, in combination with a barrel containing the valve, all the parts specified in this claim, but the barrel was octag- onal instead of cylindrical. Defendants were held to infringe. Wooleocks v. Many et al., 9 Blatch. 139.— Blatchford, 1871. 116. The claim of the patent in suit was : " I do not claim to be the inventor of annealing castings made of metal when done in the ordinary way, nor do I claim to be the inventor of any particular kind or form of furnace in which to perform the process. But what I do claim as my invention and desire to secure by letters- patent is the process of prolonging the time of cooling, in connection with annealing railroad wheels, in the manner above described —that is to say, the taking them from the moulds in which they are cast before they have become so much cooled as to produce such inherent strain on any part as to impair its ultimate strength, and immediately after being thus taken from the moulds depositing them in a previously- heated furnace or chamber, so constructed, of such materials, and subject to such contact that the temperature of all parts of the wheels de- posited therein may be raised to a point [say a little below that at which fusion commences], when they are allowed to cool so fast and no faster than is necessary for every part of each wheel to cool and shrink simultaneously to- gether, and no one part from another." De- fendant's process consisted in placing in a pit the wheels as they were turned out red hot, with a layer of charcoal beneath the lowest wheel, and between each two wheels, as well as above the uppermost, and covering the pit with a metallic plate ; the charcoal was ignited by the hot wheels and just sufficient air was admit- ted to effect combustion. Thus the wheels were reheated and permitted to cool. Defendant was held to infringe. Mowry v. Whitney. 14 Wall. 620.— Sup. Ct. 1871. ^ 117. The claim in complainant's patent for a watchman's time detector was : "1. The drum, carrying a removable piece of paper or other suitable material, marked or divided off in a convenient number of parts, in combination with a chronometer movement or time-piece, and with one or more marking devices, substan- tially as and for the purpose set forth." De- fendant's detector employed every substantial device of complainant's detector, except that de- fendant placed the springs in the lid of the case, "perforating therewith downward instead of placing them under the plate or frame support- ing the watch movement, and perforating there- with upward, thereby dispensing with the special form of what is called the fixed index, but for which, as an index serving to point to CONSTRUCTION OF PATENT— SPECIFIC CASES. 125 the hour at which the revolving dial should be set, he substitutes the mark of an arrow at the same point." Defendant was held to infringe. Buerk v. Valentine, 9 Blatch. 477. — Woodkuff, 1872. 118. Complainant's patented formula for a bookbinders' paste was as follows : "Flour, 3 pounds ; common salt [chloride of sodium, KaCl.]. 1 ounce ; alum, \ ounce ; corrosive sublimate [bichloride of mercury, HgCl.], 6 grains." Defendants' formula was as follows : " Flour, 100 pounds ; chloride of zinc, 5 pounds ; alum, 5 pounds ; bichloride of mercury, 1 ounce: oil of olives, -J^ ounce." Defendants were held to infringe. Woodward v. Morrison etal., 1 Holmes, 124. — Shepley, 1872. 119. Complainant's composition of matter, according to his specification, consisted of rubber, from 20 to 25 per cent ; gum-shellac, from 10 to 2 per cent ; Paris white, from 20 to 30 per cent ; French chalk, from 15 to 25 per cent ; litharge, from 11 to 18 per cent ; lamp-black, from 2 to 3 , per cent ; sulphur, from 1 to 8 per cent." De- fendants' compound contained : " Rubber, 30.6 per cent ; plumbago, 40 per cent ; copper and zinc, 14.6 per cent ; lead, 8.2 per cent ; sulphur, 6.6 per cent." Defendants were held to infringe. Jenkins v. Walker et al. , 1 Holmes, 120.— Shepley, 1872. 120. The claim in complainant's patent for a sand blast was : " ' The cutting, boring, grind- ing, dressing, engraving, and pulverizing of stone, metal, glass, pottery, wood, and other hard or solid substances, by sand used as a pro- jectile, when the requisite velocity has been arti- ficially given in it by any suitable means.' " Defendant used gravity, and was held to infringe. Tilghman v. Morse, 9 Blatch. 421. — Blatch- FOUD, 1872. 121. Complainant claimed his brush-head as having an angular groove or furrow, with a rub- ber ring fitting therein. Defendant used a cir- cular-bottomed furrow, and was held to infringe. Murphy et aZ. v. Easfha/m et al., 1 Holmes, 113. —Shepley, 1872. 123. Roberts's oil-well patent described water as the article used for tamping the torpedo. De- fendant used benzine, and was held to infringe. Boberts v. Boter, 5 Fish. P. C. 295.— McKbn- NAN, 1873. 123. For an example of a patent on a whip socket construed narrowly in view of the state of the art, and thereupon defendant held not to infringe, see — . Merriam et al. v. Drake, 9 Blatch. 836.— Woodruff, 1872. 134. The claim in complainant's patent was : " I claim as a new article of manufacture a hand or portable toilet-mirror, constructed sub- stantially as described, of a base-piece B, with its handle extension-piece or stiifener C, glass A, and outer back and handle D, made of any suit- able composition or cement, substantially as specified." The improvement consisted in " mounting the glass on a base-piece of wood or other material, having a stiffening extension running into the handle, and embedding the whole in a composition of cement of suitable de- scription that, upon hardening, formed the back, edges, and outside handle of the mirror." The hand -mirror of the defendant was " made of a cement applied in a plastic state and after- ward hardened, and embedded in the cement and concealed from view were two flat wires or strengtheners made of metal, and running from the body of the mirror part through the neck and into the handle, and serving to strengthen and stiffen the handle, particularly at the junction of the handle with the body." Defendant was held to infringe. Olark et al. v. Scott, 9 Blatch. 301.— Blatchfokd, 1872. 125. The claims in complainant's patent were : " 1. A stem-winding watch, so constructed that the setting mechanism is thrown into gear by turning down the pendant ring or bow when the front cap or case E is open, substantially as shown and described. 3. The combination of the cap or guard E, with the pendent bow C, and hand-setting mechanism, whereby the said cap, while closed, is made to prevent the bow from throwing the hand-setting mechanism in gear, substantially as shown and described. ' ' In defendants' device the same result was brought about by turning down the ring, but less mech- anism was used. Defendants were held to in- fringe. Jurgensen v. Magnin et al., 9 Blatch. 294.— Blatchford, 1872. 126. A claim of complainant's patent was : " ' A skirt-hoop, formed by enclosing one or more wires within a covering, which not only envelops and protects the wire, but forms an edge A and connection B, substantially as and for the purpose specified.' " Defendant used the same construction in a bustle, and was held to infringe. Young y. Lippman et al., 9 Blatch. 277.— Blatchfokd, 1873. 137. For an example of a claim construed narrowly in view of the state of the art, and de- fendant thereupon held not to infringe, see — . Odllahue et al. v. Butterfield, 10 Blatch. 382.— Woodruff, 1872. 128. The claim in complainant's patent for bil- liard-table cushion was : "'The catgut or other cord E, partially or fully imbedded or otherwise attached, at the angle a, of the rubber cushion 126 CONSTRUCTION OF PATENT— SPECIFIC CASES. C, so as to protect said cushion against the im- pact of the ball, substantially as herein shown and described, and for the purposes set forth. ' " The invention set forth was the placing and firmly securing along the corner of the rubber cushion a strong narrow cord to receive the impact of the ball and protect the cushion against such impact. In defendants' arrange- ment the cord was imbedded in the rubber cushion, against its upper edge, and there se- cured by being placed in it while the rubber was plastic and before vulcanization. Defendants were held to infringe. Declcerv. Gfroteetal., 10 Blatch. 331.— Blatchfokd, 1872. 129. The claim in complainants' patent was for ' ' thecombination of the cutting apparatus of a harvesting machine, with a quadrant-shaped platform arranged in the rear thereof, and a sweep-rake operated by mechanism in such a manner that its teeth are caused to sweep over the platform in curves when acting on the grain, these parts being and operating substantially as set forth in the specification. ' ' In defendants' machine the rake had a revolving motion, while in complainants' machine it had a vibrating or reciprocating motion. Difference held imma- terial. Seymour et al. v. Marsh el al., 9 Phila. 380.— McKennan, 1872. 130. The claim in complainants' patent for fire- arms was : " ' The combination, substantially as set forth, of the breech-closing piece, moving longitudinally with the barrel, the cartridge- chamber at the butt of the barrel, and the re- ciprocating extraction hook, arranged in such a manner that its bill enters within the periphery of the said chamber, so that it may engage with the flange of the cartridge therein when the breech is closed, by the forward movement of the closing piece, even though the cartridge be not expanded.' " The difference between the patented device and the defendant's device were disposed of by the court as follows : "It can make no difference that the flange of the defend- ant's cartridge radiates outwardly from the longitudinal axis of the cartridge, and that the flange of the plaintiffs' cartridge radiates in- wardly toward the longitudinal axis of the cartridge. ITor can it make any difference that the defendant has a rigid blank in the cartridge and causes the hook to spring to engage with the flange, while the plaintiffs have a rigid hook and cause the flange to spring to engage with the hook." Benwiak et al. v. Pond, 10 Blatch. 39.— Blatchpord, 1872. 131. In the claim of complainant's patent f6r a corset, " a pair or set of corset-springs" was specified. Thereof the court said : " ' A pair or set of corset- springs,' where it occurs in each one of the three claims, cannot be construed to mean anything else but two corset-springs con- nected by the clasps referred to, each spring be- ing constructed in the manner described." Barnes v. Straus, 9 Blatch. 553.— Blatchfobd, 1872. 132. In complainant's patented mode of treat- ing car-wheels, the wheels were reheated in a furnace with a fire at the bottom. Defendant packed his red-hot wheels in powdered charcoal, which became ignited by the contact of the wheels, and was held to infringe. Momy v. Whitney, 14 Wall. 620.— Sup. Ct. 1872. 133. In complainant's patented cotton bail ties there were mortises near each end of the plate, and the lips of the mortises were turned down- ward. In the plate of defendants' device there were no such lips, but the edges of the mortises were serrated. Defendants were held to in- fringe. Johnson v. Fassman et al., 1 Wood, 138. -Woods, 1872. 134. Where certain bars were claimed as "thin" and "wide," defendant's "roimd" bars were held not to infringe. Keystone Bridge Co. V. PJuBnixIron Co. et al., 5 Fish. P. C. 468. — McKbnnan, 1872. 135. Where complainant practised his patent- ed invention in bonnets by one operation, de- fendant was held to infringe by practising it in two operations. Baldwin v. Bernard et al. , 5 Fish. P. C. 442.— Blatchfoed, 1872. 186. The claim in complainant's patent was r "1. An elastic packing composed of at least four tenths of finely pulverized refractory, earthy, or stony material, intimately mingled with and held together by rubber prepared and vulcan- ized, as and for the purpose described. " There- of the court said : " The proper construction of the claim of the patent is, that it claims a pack- ing, into the composition of which there enters at least four tenths of refractory, earthy, stony, or mineral matter, which must go in in a pul- verized state in order to be intimately incoi'po- rated with the caoutchouc or india-rubber, which serves as a vehicle to hold the powder, the compound being then vulcanized by subjecting it to heat in the presence of sulphur, and the re- sult being a packing which is elastic while it is indestructible by heat." "The ingredients found in the defendants' packing, by analysis, are india-rubber, sulphur, the oxides of lead and iron, and soapstone. The proportion of india- rubber and the proportion of sulphur to the whole mass exceed each of them the highest percentage given the specification for those arti- cles respectively. " Defendants were held to in- GONSTRUCTIOJSr OF PATENT— SPECIFIC CASES. 137 fringe. Jenkins v. Johnson et al., 9 Blatch. 516. — Blatchford, 1873. 137. For an example of a strict construction of a claim in view of the prior art, see — . 8ar- ven V. Hall et al. , 9 Blatch. 524. — "Woodbupp, 1872. 138. For an example of a variety of cotton- bale ties held to infringe complainant's patent for a cotton bale tie, see — . Cook et al. v. Ernest et al, 5 Fish. P. C. 896.— Woods, 1872. 139. The claim in plaintiffs' patent for a cot- ton-bale tie was : " 3. The slot cut through one bar of the clasp or buckle, as shown in the dia- gram, which enables the end of' the tie or hoop to be slipped sidewise underneath the bar in the clasp or buckle, so as to effect the fastening with greater rapidity than by passing the end of the tie through endwise." Thereof the court said, in its charge to the jury : " I say to you . . . that the third claim of the . . patent covers the open slot in the cotton-tie buckle used for the purpose of passing the end of the tie sidewise through the slot under the bar, no matter by what other manipulation of the tie that result is attained ; and I say to you, further, that it is not necessarily connected with the remainder of the . . . tie, and it covers the open slot used on other forms of buckle for substantially the same purpose and in substantially the same way." MeComb et al. v. Brodie, 1 "Woods, 153. —Woods, 1872. . 140. For an example of a patent construed narrowly in view of the state of the prior art, and thereupon respondents' somewhat similar machine held not to be an infringement, see — . Metropolitan WasluTig Mach. Co. v. Providence Tool Co., 1 Holmes, 161.— Shbplby, 1872. 141. The claim in complainant's patent for a device for attaching shanks to mineral and com- position buttons was : " ' What I claim as my invention and desire to secure by letters-patent is that improvement in the means for fastening shanks to mineral and other like buttons, which consists in combining a cross-bar d with a base- plate a, to which latter the shank is attached, both cross-bar and plate secured to the button- head, substantially as described. ' ' ' The court held that this " claim cannot be sustained upon a construction broad enough to cover any form of disk which is not circular. As it required no invention, in the state of the art, as it existed at the date of complainant's invention, to substi- tute a disk with a serrated edge for the old disk with a circular edge, and as this is all the de- fendants have done, they cannot be considered as infringing upon his patent, which is for the combined cross-bar and disk, both disk and cross-bar being arranged as described in his pat- ent." Potter V. Thayer eial., 1 Holmes, 298. — Shbplby, 1873. 142. The claim in complainants' patent for shingle machine was : " ' I also claim present- ing the sides of the fibres of the wood to the action of the saws, in the sawing of a shingle or equivalent articles, for the purpose of giving them smoother surfaces than can be produced by the usual mode of sawing, substantially as herein set forth. ' ' ' Thereof the court said : " This claim, if literally construed, calls for a result which cannot bo allowed under the patent law ; but I think a fair and liberal interpreta- tion should be given, and I construe this as a claim for the mechanism by which the result is attained : or, in other words, the mechanism by which the sides of the fibres of the block are presented to the saw, as set forth in the speci- fications." Defendant's machine, being operated by hand, was held not to infringe. Euarts et al. V. Ford, 6 Fish. P. C. 587.— Blodgett, 1873. 143. The claim in complainants' patent for machine for making paper-bags was : " ' Mak- ing the side-cutters B with curved ends, sub- stantially as and for the purpose set forth.' " It was held that any degree of curve to the inner end of the cutter, which would produce the re- sult described, was within the claim. Union Paper-Bag Machine Go. et al. v. Newell et al., 11 Blatch. 379.— Blatchpobd, 1873. 144. " If a spoke tenoned into a wooden hub, and having a shoulder resting on the surface of the hub, were new and were patented, it is not possible that any one who should pass a metal- lic band around a wooden hub and make a mor- tise therein, and a mortise in the wooden hub beneath, and insert the tenon in the mortise so that the shoulder should bear either squarely or obliquely on the metal, could escape the charge of infringing such a patent. " Sarven v. Sail et al., 11 Blatch. 295.— Woodbupp, 1873. 145. The claim in complainant's petent was : " ' A receiver for pan water closets, formed and constructed so that the side A, D, into which the pan swings for emptying, will conform to the shape of the pan and avoid the ^waste space be- hind the pan, as in ordinary or common receiv- ers, substantially as and for the purpose set forth. ' ' ' Thereof the court said : " It is a claim not merely for conformity, but conformity at- tained by the particular means which are here in the specifications set out, and shown in the im- plement of which he has given a, drawing." Stnith V. O'Connor, 3 Sawyer, 461.— Sawybb, 1873. 146. Where an improvement in cans for paint 128 CONSTRUCTION OF PATENT— SPECIFIC CASES. and the like consists in using an annulus of thin tin in one end and near the periphery, so as to be easily cut, he infringes who makes the whole top of thin tin. Masury v. Anderson et al., 11 Blatch. 162.— Blatchfokd, 1873. 147. The claim in complainant's patent for mortising machines was : " ' What I claim as my invention is the afore described combination for reversing the chisel by power applied by friction [with band or otherwise], and stops operated so as to stop the chisel when reversed, in the manner essentially as set forth. ' ' ' There- of the court said : " The claim is held to be for the combination of the power of reversing by friction, with a stop to arrest it, as distinguished from the specific devices. " Smith v. Fay et al., 6 Fish. P. C. 446.— Emmons, 1873. 148. A claim in complainants' patent was : " 1. A rotary blower-case, the interior of which is rendered true and accurate by means of plas- ter-of-Paris or its equivalent, applied substan- tially as described." The court held that the adoption of any plastic material which would harden in the conditions described, which could be applied as described, and which would ac- complish the results described was within the claim. Moots et al. v. Byndman, 6 Fish. P. C. 439.— Emmons, 1873. 149. A claim in complainants' patent was : " 4. A rotary blower-case having concave arcs B, B, in combination with end-plates I, I, ar- ranged so as to admit of abutments being intro- duced or removed without requiring the case to be taken apart, substantially as set forth." Thereof the court said : " What is meant when all is read together is simply this : When the machines are small, I cast case, table or stand- ard, and legs altogether. If large, so as to ren- der this too cumbersome, I cast them in two or more pieces. ' ' — Ih. 150. A claim in complainants' patent for ma- chine for making paper-bags was : "1. I claim the machine as a whole, composed of mechan- ism for forming, feeding, cutting, pasting the tube or bag, combined or arranged, and operat- ing substantially as described." This was held to be a combination claim. Union Paper-Bag Co. V. Nixon et al., 6 Fish. P. C. 402.— Em- mons, 1878. 151. A claim in complainant's patent for pa- per-bag machine was : "2. I also claim the use of a supporting-bar or its equivalent, around which the bag may be formed into a tube, and in connection with which the said paper tube may be severed, each and the whole, substan- tially as described." This was held to be a claim "for a supporting-bar, with its end dis- tended and shaped so as to enable the oblique cut to sever the tube and form a lap for the bot- tom of the bag." — lb. 152. A claim in complainant's patent for paper-bag machine was : "3. I also claim giv- ing the paper the variable feeding motion, for the purpose and in the manner substantially as described. " This was construed to be " a com- bination claim, including the roller which works in the supporting-bar, and the devices more im- mediately concerned in carrying forward the paper and giving it tension while it is served." -n. 153. The claim in plaintiff's patent for saw- mill was : " ' Having thus described the best mods with which I am acquainted of embody- ing my improvements, what I claim as my in- vention and desire to secure by letters-patent is giving to the saw in its downward movement a rocking or rolling motion, by means of the com- bination of the cross-head working in curved guides at the upper end of the saw, the lower end of which is attached to a cross-head work- ing in straight guides and pivoted to the pitman below the saw with the crank-pin, substantially as described.' " In the patent drawings the curved guides were represented as set with their concaves facing in the same direction as the edge of the saw, and nothing was said as to whether they were to be set with the lower end perpen- dicularly under the upper end or in an inclined position. Defendants used the guides in an in- clined position, and were held to infringe. Hamil- ton V. Ives et at., 6 Fish. P. C. 244. — Longtbak, 1873. 154. In complainants' patented apparatus for making extracts from tan bark, there was noth- ing new in the form or structure of the leach nor in the mode or purpose of its use except connecting it with the exhaust of the engine rather than with the boiler ; and as defendants' device had a direct connection with the boiler, defendants were held not to infringe. Bridge et al. v. Brown et al., 1 Holmes, 205. — Shep- LEY, 1873. 155. The claim of the patent in suit was : " I claim as my invention the manufacturing of fat acids and glycerine from fatty bodies by the action of water at a high temperature and press- ure." One provision of the specification was : ' ' No steam or air shall be allowed to accumulate in the tubes, and ... the tubes shall be kept entirely full of the mixture." The inventor was " not the original and first inventor or dis- coverer of the scientific truth that beef tallow and palm-oil may be decomposed by heat, or by heat and water combined, nor of the scientific CONSTRUCTION OP PATENT— SPECIFIC CASES. 129 truth that fat acids of commercial 'value may be obtained from such substances as tallow and palm-oil by means of heat and -water." The court held that ' ' the invention must be limited to the described method of producing free fat acids and the solution of glycerine from the fatty and oily substances. " The court further held that the method or process embodied in the patent included high heat and rapid manipula- tion. Defendant's apparatus was for the same purpose, and produced chemical decomposition by means of superheated steam and water, em- ploying only moderate heat and employing stearri as well as water in the vessel, whicli was never filled by the fatty substance, ot with water or with both combined. Defendant was held not to infringe. Mitchell v. Tilghman, 19 Wall. 387. —Sup. Ct. 1878. 156. The patent in suit was for a clothes- wringing machine, and the claims thereof were : "1. The employment or use of a portable frame or yoke B, with uprights SS or their equiva- lents, for supporting a clothes-wringing mechan- ism in position on one side of a common wash- tub, for the purposes set forth. 3. The applica- tion of an adjustable clamping device, when employed to attach a clothes-wringer to one side only of a wash-tub, substantially in the manner described and for the purposes set forth." Thereof the court said : "Regarding these two claims as descriptive of two distinct things, the first must refer to the U-shaped yoke or frame for supporting a wringing-machine, as exhibited in the drawings and explained in the specifica- tion, and the second to a combination of the yoke with a clamping device, when employed to hold a clothes- wringer to the side of a tub. ' ' Clothes- wringers of many kinds were old, and ; clamp devices of many kinds were old. De- 1 fendant's machine was shaped like an inverted M, and was held not to infringe. Washing Ma- chine Co. V. Tool Co., 30 Wall. 342.— Sup. Ct. 1873. 157. " The claims are to be construed with reference to the state of the art at the time when the alleged invention was made." — lb. 158. A claim of the patent in suit was : " The employment of fat liquor in the treatment of leather, substantially as specified." The court held that " the . . . claim was intended to cover, and does cover, only the use of heated liquor." Klein v. Sussell, 19 Wall. 438.— Sup. Ct. 1873. 159. The patent in suit was for an improve- ment in stoves, and a claim thereof was : " 1. The flaring fire-pot supported by a base, the diameter of the pot narrower at the bottom than at the top." The court held this claim limited to a closed combustion chamber over the fire-pot formed by the flange of tlie reservoir resting on the upper edge of the pot and provid- ed with projections or ears in connection with two flues passing downward. On this construc- tion the defendant was held not to infringe. Sailes et al. v. Van Wormer et al., 30 Wall. 353. —Sup. Ct. 1873. 160. The jDatent in suit was for an improve- ment in stoves, and a claim thereof was : ' ' Holes or openings in the iron case of the stove in which to put plates of mica so a^ to let the fire in the stove be seen through it, and to give light to the room in which the stove is." The court held that one element of this combination was a closed combustion chamber formed in part by the circular fiange extending outward on the top of the fire-pot, with perforations in it or ears for connection with the downward flue. On this construction defendant was held not to infringe. — lb. 161. The patent in suit was for an improve- ment in Stoves, and a claim thereof was : ' ' Re- vertible flues outside of the pot to conduct the products of combustion downward to the base of the stove and thence to a main draft-flue lead- ing to the mouth." Also : " A. direct shaft for such stoves as are constructed witli revertible flues, the direct shaft being obtained by a flue passing out above the fire-pot, and provided with a damper to be closed after the fuel has ignited. " A closed combustion-chamber was construed into the claims. On this construction defendant was held not to infringe. — lb. 163. A claim in complainant's patent was : " ' I claim the above-described new manufac- ture of deodorized heavy hydrocarbon oils, suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil, from heavy hydrocarbon oils, by treating them sub- stantially as hereinbefore described. ' " ' Thereof the court said . ' ' The thing patented and cov- ered by the first claim in the patent is, ' a heavy hydrocarbon oil produced from heavy hydrocar- bon oils, themselves the product of distillation, and having the offensive odors peculiar to pe- troleum distillates ; such patented hydrocarbon oil so far deodorized as to be free from the char- acteristic odors of, heavy hydrocarbon oils, and having a slight smell like fatty oil, suitable for lubricating and other purposes, and the product or result of the treatment described in the pat- ent. ' ' Defendants' process was not a deodorizing or disinfecting process, but so conducted the distillation and dissolution of crude petroleum 130 CONSTEUCTION OF PATENT— SPECIFIC OASES. as to leave it free from the odorous bodies ; and defendants werp held not to infringe. Merrill V. Yeomans et al., 1 Holmes, 331.— Shbplby, 1874. 163. A claim in complainant's patent was : " In a registering steam-gauge, the combination of the following instrumentalities — viz. : First, a registering wheel ; second, suitable mechanism for revolving the same in one direction and for preventing its return ; and third, suitable means for adjustment, so that the gauge will be opera- tive as a register only at a prescribed limit of steam pressure, all constructed and operating substantially as set forth. ' ' The court held that, in view of the prior art, the claim could not be construed broadly as for the combination of these three instrumentalities, but must be con- strued literally. U. S. Steam Oauge Co. v. Am. Steam Gauge Go., 1 Holmes, 309. — Shbplby, 1874. 164. Complainant's patented gaslight reflector employed glass with a silver coating. Defend- ants used, in the same place, a metallic body having a bright surface behind glass, and were held to infringe, the two being held to be me- chanical equivalents. Prink v. Petry et al., 11 Blatch. 422.— Blatchfokd, 1874. 165. The claim in complainant's patent for glass-cutter was: "'I do not claim simply a revolving cutter, but what I claim as new and desire to secure by letters-patent is : 1. The cut- ter A constructed substantially as shown and described and for the purposes set forth. " The specification contained the following : " The bevelled portion of the sides should be at an angle of about forty-five degrees to the axis of the cutter, and consequently will be at near right angles to each other. It is not necessary that the angles of the bevelled sides should be at ex- actly right angles to each other, but near that angle, or a very little more obtuse, the cutter is found to operate to the best advantage." The court said : " The invention, ... so far as the cutter is concerned, must consist in its form, in the fact that the sides are made parallel and then bevelled toward each other at an angle of about forty-five degrees to the axis of the cutter, so as to meet about midway between the same in a cutting edge." Monce et al. v. Adams, 12 Blatch. I.-Shipman, 1874. 166. Complainant's patented process for mak- ing white oxide of zinc was found " to consist in the employment of a thin bed-fire of chestnut coal and of a superincumbent layer of pulverized ore and pea coal of the approximate thickness of three inches ; the enforced passage of atmos- pheric air in numerous jets through the mass by which its combustion is maintained ; the vapor- ization of the zinc and its oxidation in the furnace above the charge, when the zinc in the ore is expelled, and the repetition of the proc- ess." The bottom of the patented furnace chamber was composed of perforated iron grate- bars. The double function of these bars was to support the burden of the bed-fire and the charge, and to diffuse through it a blast of air forced into the closed ash-pit below. Defend- ant's furnace had a like large superficial area, with a wide door opening into it, and provided with a blast underneath the charge, but without grate-bars. Defendant was held to infringe. Wetherill v. JVew Jersey Zinc Co., 1 Bann. & Ard. 105.~McKennau, 1874. 167. A claim in complainant's patent for looms was : " ' In combination, the lay and its rigid shuttle-box, the pivoted vibrating wire trough, the reciprocating driving slide, and the latch moving thereon, the latter being operated by the wire box, the combination being and operating substantially as described. ' " " The only differ- ence . . . found in the combination used by the defendants and the combination patented by the complainant . . . was the substitution by the former of a wire bar or trough, mounted upon a horizontal rock-shaft supported by two arms and reciprocating equally throughout its whole length, for a wire bar or trough mounted on a vertical shaft, pivoted at the outer end, with the end nearest to the loom oscillating to the extent required to transport the wire into the shed. " The horizontal shaft supporting the wire trough by two arms, substituted by defendants for complainant's pivoted shaft, was not new ; it did not perform substantially different functions, and at the date of complainant's patent it was known as a substitute for the omitted mecha- nism. Defendant was held to infringe. Webster et al. V. JVew Brunswick Carpet Co., 1 Bann. & Ard. 84.— NixoK, 1874. 168. A claim in complainant's patent for hydraulic mining apparatus was : " ' The two curved sections A, B, connected by a horizontal swivel joint, in combination with a nozzle con- nected by a semi-universal joint, constructed and arranged substantially as set forth.'" It was held, in view of the prior art, that the claim must be limited to the peculiar joint described, which was a semi-cylindrical joint. Defendant used a ball and socket joint, and was held not to Infringe. Fishei- v. Ci-aig, 8 Sawyer, 69.— Saw- YBR, 1874. 169. The difference between complainant's patented watchman's detector and defendants' watchman's detector was that, instead of forcing CONSTEUCTION OF PATENT— SPECIFIC CASES. 131 the points upward to perforate the paper, as was done by complainant's device, defendants forced the paper downward upon, and to receive an impression from stationary projections from the surface helow. Defendants were held to infringe. Buerk v. Imhaeuser et al., 1 Bann. & Ard. 337. — WOODRTIPF, 1874. 170. Claims in complainants' patent for port- able and adjustable still- water dam were : " 1. The construction and arrangement of a port- able and adjustable dam in sliding or telescopic sections, in the manner and for the purposes herein described. 2. The combination of the self -anchors 3, with the dam, in the manner and for the purposes herein described." In view of the prior art, the court said : " "When . . . the first claim of the patent claims ' the construction and arrangement of a portable and adjustable dam in sliding or telescopic sections, in the manner and for the purposes herein described, ' it is a necessary part of the manner of construc- tion and arrangement of the dam in such sec- tions that it shall be suspended from the deck when in use, and such suspension is a necessary element of the claim." And again : " The term ' self-anchors,' in the specification and in the second claim, means anchors capable of self- adjustment by having at all times free play, be- cause not attached to their sockets, and so not moving with the movement of the bottom sec- tion to which the sockets are attached ; and the term 'the dam,' in the second claim, means a dam suspended from the boat, with the resulting consequences in its movement, in operation, be- fore stated. ' ' In defendants' apparatus the dome was not, when in position for work, suspended from the float, nor was the funnel self-adjusting to various depths of water, nor did it have self- anchors free to slide at all times while the ap- paratus was in use and self-adjusting at all times. Defendants were held not to infringe. 0am- meyer et al. v. Newton et al., 13 Blatch. 133. — Blatchfobd, 1874 171. A claim in complainants' patent for port- able and adjustable still- water dam was : " The combination of the boats, supports, or floats with the dam, as above described, and the arrange- ment of anchors to hold such boats in position, in the. manner and for the purposes described." Thereof the court said : " In order to make the dam a member of the combination, the anchors which are connected with the boat by chains passing through the eye-bolts on the bottom sec- tions of the dam must be included." And de- fendants were held not to infringe. — IT). 173. A claim in complainants' patent for port- able and adjustable still-water dam was : " ' The combination of windlasses, chains, and boats with the dam, as above described, so that, by the construction thereof, a series of drills may be operated within and enclosed by the dam, in the manner and for the purposes herein de- scribed.' " Defendants' device had no chain combined with the dome, nor were the drills operated in the manner described by the paten- tee ; and defendants were held not to infringe. -lb. 173. The claim in complainant's patent for improvement in rings for martingales was : " The rings for martingales, etc., manufactured as set forth, with a metal ring enveloped in com- position, as and for the purpose specified." Complainant's mode of manufacture was to en- velop the metal ring in artificial ivory composi- tion and give exterior finish by pressing and solidifying the composition. Defendants took iron rings, coated them with rubber, vulcanized the rubber, and then formed them in a lathe or the like. Defendants were held to infringe. Welling v. Rubber- Coated, Harness Trimming Co. et al., 1 Bann. & Ard. 282.— Nixon, 1874. 174. The claim in complainant's patent for exercising apparatus was: "1. The handle B, driven by any suitable mechanism by which a vibrating or oscillating motion is imparted to it, . substantially as and for the purpose set forth. " In defendant's machine the handle and foot-hold had a rotary motion, but defendant was held to infringe. Taylor v. Wood, 13 Blatch. 110. — Blatchpokd, 1874. 175. In complainant's patent for medical rub- bing-machine, a claim was : "1. The rubber A, composed of india-rubber, and having its outer surface coated or covered with india-rubber, the said outer surface being furnished with project- ing rims, points, or corrugations." Defendant used a rubber having a surface of cloth or leather stuffed with some material, and very slightly elastic and corrugated. Defendant was held to infringe. — lb. 176. The claim in complainant's patent was : " I do claim as my invention and desire to secure by letters-patent . the combination of the lead and india-rubber or other erasing substance in the holder of a drawing-pencil, the whole being constructed and arranged substantially in the manner and for the purposes set forth." In view of the prior art, the court held that such a claim must be limited to the construction ex- hibited in the specification in those respects only in which it differs from the devices of the prior art. Beekendorfer v. Faiier, 13 Blatch. 68.— WoODBtlFF, 1874. 177. The claim in complainant's patent was : 133 CONSTEUCTION OP PATENT— SPECIFIC CASES. " ' I claim my improved caoutchouc cutting- machine, having its several parts constructed and arranged in manner and so as to operate substantially as described, such machine not only having a single drum or cylinder to support and a revolving knife to cut a sheet of. caoutchouc as explained, but having machinery for travers- ing the rotary knife with reference to the drum, and also having machinery for moving such knife toward and away from the drum, as speci- fied.' " Thereof the court said : " He invented no new machine, but he operated an old machine in a different manner, and produced a new and different result. That he did not make a patent- able invention we are not disposed to decide ; but the discovery of a new mode of operating an old machine to produce a new result does not give him the right to a monopoly of the old ma- chine. Broadly as courts are disposed to con- strue patents for the sake of upholding a mer- itorious invention, yet when it is too clear to ad- mit of a doubt that the patent is for a machine, the court cannot change it into a patent for an art. " Boston Elastic Fabric v. East Hampton Bub- ber Thread Co., 1 Holmes, 372.— Sheplby, 1874. 178. The claim in complainant's patent was : " ' 3. The safety-valve C, with its overhanging downward curved lip or periphery and annular recess D, substantially as herein shown and de- scribed, and for the purpose set forth. ' ' ' There- of the court said : " Prom the history of the art as previously given, and from a comparison of the original with the reissued Naylor patent, as well as from the language of the claims in the reissued patent, it is manifest that if >these claims can be sustained, it can only be for the combina- tion of the described valve, with its overhanging downward curved lip, with precisely such an annular recess surrounding the central chamber as he describes. ' ' Ashcroft v. Boston & Lowell R. B. Co., 1 Holmes, 366.— Shepley, 1874. 179. The claim in complainant's patent was : " ' The plate of hard rubber or vulcanite or its equivalent for holding artificial teeth,. or teeth and gums, substantially as described. ' " It was held by the court that this was " for a new article of manufacture, consisting of a plate of hard rub- ber or vulcanite, with teeth, or teeth and gums secured thereto in the manner described in the patent. The patent is not for a process or art, but for the new product resulting from the manipulation by the described new process. It is one of those products, as will be seen by ex- amination of the specifications describing the process of manufacture, in which the process so inheres that the described product can onlv iDe made by the described process." Qoodyear Dental Vulcanite Co. et al. v. Smith, 1 Holmes, 354. -Sheplby, 1874. 180. The claim in complainant's patent for spark arrester was : " ' The combination of the compound blast-pipe, with a spark or return flue communicating with the fire chamber, provided with a bell-shaped mouth, which is located above, adjacent to, and coincident with the exit apertiire of the blast-pipe, substantially as and for the purpose specified.' " The. court found that the ' ' invention consisted in the combination, with the compound blast-pipe, of the described bell-mouthed return flue, operating together in such amanner that the sparks were driven into the mouth of and through said flue in a continuous current, without resting, into the fire chamber by the force of the continuous action of the blast. ' ' The court further found that in the complain- ant's patent " the current fi'om the blast-pipe" was ' ' received into the bell-shaped mouth and defiected in one direction only, into a tubular or cylindrical return flue. In the spark arresters and consumers used by the defendants the cur- rent from the blast-pipe" was " received on a cone and deflector, making together a bell-shaped deflector, itself de;flected so as to deflect the sparks in all direction outward and downward into the annular chambers surrounding the blast- pipe, which annular chamber" terminated " in two tubes passing through the boiler and con- necting with the fire-box." Defendants were held to infringe. Pike v. Providence & Worces- ter B. B. Co., 1 Holmes, 445.— Shepley, 1874. 181. The claim in complainant's patent was : " ' The combination and arrangement of the perforated end a, of the wheel -tube around which the wire screen or gauze B is placed ; point D, secured to the end of said tube, forming the j chamber E and air passage G.' " The court ! held this to be a claim for a combination of the I wire screen, enlarged drill-head, and the air pas- I sage, and that as the first two features were old I in severalty and in combination, defendants could not be charged with infringement by making use of these two without the air passage, and defendants were held not to infringe. Craig v. Smith, et al., 4 Dillon, 349.— Dillon & Fos- ter, 1874. 183. The claim in complainant's patent was : " ' A wooden bung rendered impervious to the passage of fluids through the pores of the wood by means of the described or other suitable sub- stances. ' " The court found that " the inven- tion of the patentee consisted in a wooden bung rendered impervious to the passage of gases, or beer, or other liquids." Qeien- v. Ooetinger, 1 Bann. & Ard. 553.— Swing, 1874. CONSTRUCTION OF PATENT— SPECIFIC CASES. 133 183. The claim in cpmplainant's patent was : " ' The forming of one, two, or more creases in cloth by means of markers on opposite sides of the cloth, which markers are the notch and blade or the notch and point, one connected with the bed of the machine and the other operated simul- taneously with the vibrations of the needle-bar in a sewing-machine. ' " Of this claim the court said . " It does not mean every kind of tuck- creasing rae,chaEism having its upper and lower parts connected and together adjustable, but any tuck-crcasing mechanism substantially such as described, which words are very important, and essentially qualify the preceding words. It must, therefore, mean the kind of mechanism — mechanism s\ich as here described — not any form of mechanism, however different it might be, but this particular form of mechanism or that which is substantially the same." Fuller et al. v. TenUer etal., 6Bissell, 203.— Drdmmond, 1874. 184. A claim in complainants' patent for saw was: "1. The saw herein described, having a series of alternate sets of fleam and curved plan- ing teeth, located upon the same plate or blade, the sets of fleam teeth for scouring the sides of the kerf, and sets of curved planing teeth for removing the wood between the scores when con- structed and arranged to operate in the manner shown and described. ' ' Thereof the court said : " The position and use of these different teeth in the ' manner described in the specification' is the plaintiffs' invention." In defendants' saw one set of teeth planed out and the other rasped. Defendants were held not to infringe. Wlieeler et al. V. Simpson et al., 1 Bann. & Ard. 420. — Hunt, 1874. 185. A claim in complainant's patent for saw was : " ' The employment of alternate clearing testh, dd,the ends of which are concaved or notch- ed so as to form sharp or pointed corners in com- bination with the triangular pairs of cutting teeth A A, arranged on a single blade, substantially as and for the purposes herein set forth. ' " The court held complainants' patent to be " limited to the use of notched clearing teeth in combina- tion with the particular triangular pairs of cut- ting teeth which he describes. " Although the operation and function of the teeth in defend- ants' saws were the same, they were produced by means of instruments quite different in their construction, and defendants were held not to infringe. — lb. 186. A claim in complainant's patent for egg- beater was : " ' The beaters I and J revolved in opposite directions by suitable mechanism, sub- stantially as set forth.'" Defendant's beaters revolved in opposite directions, but concentrical- ly, while the axes of the beaters in the complain- ant's patent worked some distance apart. De- fendant was held not to infringe. Monroe v. Dover Stampirix; Co., 1 Holmes, 413. -Sheplet, 1874. 187. A claim iu complainants' patent was : " ' As a new article of manufacture, a liand or portable toilet-mirror, constructed substantially as described, of a base-plate B, with its handle extension piece or stiffener C, glass A, and outer back and handle D, made of any suitable com- position or cement, substantially as specified.' " Defendant's hand-mirror had no "wooden or other base-piece of suitable material " behind Uhe "glass designed to bo mounted," and no ' extension from such base-piece into the handle. I In the smallest and weakest part of the handle ! two nails of iron were embedded. Defendant was held not to infringe. Florence M'fg Co. v. ] Boston Diatite Co., 1 Holmes, 415. — Shepley, 1 1874. j 188. A cldm in complainant's patent for re- ! frigerator was : " The combination of the de- 1 scending conduit or cold-air flue, or either, with : a reservoir for containing cooling materials, sub- ! stantially in the manner and for the purposes 1 described." Thereof the court said : " A com- I bination, to be the same combination, whether as I an infringement or as anticipatory, must not I only be a combination of such two instruments, but mu.st be one having the principle and mode of operation, and operating in the same manner and effecting the same purpose of the combina- tion described in the patent. " Lyman Ventilat- ing & Refrigerator Co. v. Lalor, 12 Blatch. 303. — Blatchford, 1874. 189. A patentee described his invention as fol- lows : " My said invention consists in the em- ployment, in a locomotive engine, of a truck or pilot wheels provided with pendent links to al- low of a lateral movement, so that the driving wheels of a locomotive engine continue to move correctly on a curved track in consequence of the lateral movement allowed by said pendent links, the forward part of the engine travelling in a tangent to the curve, while the axles of the drivers are parallel, or nearly so, to the radial line of the curve." The court said that, "in view of the history of the art," the invention " was the combination with, or the employment in, such an engine of a truck fitted with diver- gent pendent links to allow lateral motion, and having the properties and capabilities of the pe- culiar truck described in the specification." Locomotive Engine Safety Truck Co. v. Penn. B. R. Co., 1 Bann. & Ard. 470.— Stkong, 1874. 190. A patent was for a process of treating 134 CONSTEUCTION OF PATENT— SPECIFIC CASES. straw and other fibrous materials for procuring paper pulp. Defendants applied the process to bamboo, and were held to infringe. Am. Wood- Paper Go. V. Fibre Disintegrating Co., 23 Wall. 566.— Stjp. Ct. 1874. 191. The patent in suit was for a picker staff motion in looms, and the claims thereof were : "1. The combination of a rocker of a picker- staff with its bed by loose journals projecting on each side of the picker-staff, and arranged be- neath the picker-staff, substantially as described. 2. The combination with the rocker, the bed, and the journals of the open boxes, substantially as and for the purpose described. 3. In com- bination with the rocker and its bed, the journal- bearing arm, operating substantially as and for the purpose specified." The court construed these claims to embrace " every combination with a rocker of a bed and loose journal-bearing arms, arranged so as to produce the result de- scribed in the specification as effected by the combination. ' ' In defendants' machine the arm was attached to the second journal, not, as in the patented machine, by a slot in the rocker ; and the form and the location of thearms differed, but they performed the same function and in substantially the same manner. Defendants were held to infringe. Mason v. Qi-aliam et al. , 33 Wall. 261.— Sup. Ct. 1874. 192. The patent in suit was for the Blake stone crusher. Where the Blake machine used a con- neoting-rod for communicating motion from the revolving shaft to the movable jaw, defendants introduced a column of water ; defendants were held to infringe. Blake v. Robertson et al., 6 O. G. 297.— Benedict, 1874. 193. A claim in complainant's patent for bil- liard-table cushion was : " ' The catgut or other cord E, partially or fully embedded or otherwise attached at the angle a of the rubber cushion C, so as to protect said cushion against the impact | of the ball, substantially as herein shown and i described, and for the purposes set forth.' " An ! alleged infringement consisted in the use of a flat strip of metal fitted in a slot moulded in the india-rubber cushion and running from end to end thereof, and strained by a straining-key at its end. Another alleged infringement consisted in the use of a round metallic wire arranged in like manner as the flat strip of metal, and situated in close proximity to the inner, vipper corner of the cushion. A patent prior to that of the pat- ent in suit set forth the invention thereof as con- sisting in the introduction of a strip of spring steel or equivalent material into a crease or groove cut into the face of the rubber near the angle thereof, in such manner that the steel was protected from injury by llie rubber, which thus Intervened between the steel and the ball ; under this patent, and prior to the patent in suit, there had been many billiard-tables with the added feature of an arrangement for tying down the steel strip to the cushion by means of holes in the lower edge of the strip, and wires put tlirough them and fastened to the under side of the rail to keep the strip in place in the rubber. It also appeared that, prior to the patent in suit, another party had made india-rubber cushions for billiard-tables which had a French clock spring placed in a slit cut in the upper face of the rubber parallel to and near the inner face of the rubber, bringing the upper edge of the spring near the upper corner of the rubber, the spring being cemented into the slit, with cloth glued over the slit, and the spring was thus em- bedded entirely within the rubber. In view of this prior art, the patent in suit was held to be limited to a cord applied outside of the upper corner of the cushion, and defendants' device was held not to infringe. Decker v. Griffeth et al., 13 Blatch. 189.— Blatchford, 1875. 194. A claim in the patent in suit, for a ruifle, was : " As a new article of manufacture, the gathered cloth A [the rufiled strip], being se- cured to the binding B [the band] by a single series of stitches C, which perform the double duty of confining the gathers and of securing the gathered cloth to the binding, substantially as set forth." In the patented ruffle the dis- tinguishing features were " the single series of stitches and the unvarying regularity of the plaits or gathers, thus dispensing with the gath- ering thread, avoiding the injurious process of whipping or scratching the fabric with a sharp needle, and the perforations in the ruffled piece which the needle and thread make in the gath- ering. ' ' The plaintiff's ruffle was an unfinished article to be attached by the band to garments. Defendant s ruffle was a finished article designed to be worn as a neck ruffle. Yet defendant's ruffle had the distinguishing feature of plaintiff's patented ruffle in that it contained a row of stitches performing the double office of confin- ing the gathers and attaching the ruffled cloth to the band ; and, although it had a second series of stitches, was a completed article, different in appearance, and was used for a different purpose from plaintiff's ruffle, it was held to be an in- fringement. Magic Ruffle Co. v. Blm City Co., 13 Blatch. 151.— Shipman, 1875. 195. The claims of the patent in suit, for im- provement in looms, were : " The two rollers B and C continuously rotating at a suitable dis- tance apart, and the series of sectional rollers or CONSTRUCTION OF PATENT— SPECIFIC CASES. 135 wheels D, mounted and operated so as to tie pressed wedgewise when the take-up Is to act, all substantially as and for the purpose set forth. . . [3] A series of needles h k, in combination with a take-up composed of rollers or wheels D, arranged to take up at intervals on parts of the work and to liberate other parts, substantially as and for the purposes herein specified." De- fendant's take-up consisted of an endless sheet or sheets of rubber pressing the fabric against a roller. The pressure was regulated by set screws. All parts of the roller bore at all times with equal pressure against the whole width of the fabric. The effect of the take-up was sec- tional, but that effect was not due to the sec- tional action of the take-up, but to the action of the lay. Defendant was held to infringe. Car- steadt V. U. 8. Cm-set Co. , 13 Blatch. 199.— Ship- man, 1875. 196. A claim in the patent in suit, for improve- ment in looms, was : " The needles or points k k, fixed on a stationary bar K, and arrajiged as specified, so that the fabric, being drawn by the take-up proper, is continuously carried across the needles, to be received by their points, and to be arrested when a reverse movement of any part of said fabric is commenced, substantially as herein set forth." The court held that " the take-up which is mentioned in the second claim does not mean every kind of a take-up, or the take-up in every kind of looms, but refers only to the take-ups which are designed or adapted to the weaving of irregular fabrics." — lb. 197. The patent in suit being for an improve- ment in planing machines, a claim thereof was : " ' I also claim the arrangement of matching cut- ters to be adjusted both laterally with each other and' vertically upon the bed-piece, essentially as described, in combination with the platen, so that the planing and matching of the piece may both proceed at the same time, or either the planing or matching may be done separately, whether the platen be made movable with the piece secured ! thereon, or the platen be fixed and the piece be j made to move thereon.' " Thereof the court said: "A construction which should compel the patentee to the declaration that his machine could neither match or plane the boards when placed upon a movable platen, the matching cutter being upon stationary arbors projecting through the platen, would be a construction of the utmost rigor and in violation of the liberal rules in regard to the interpretation of patents, which have prevailed in courts of this country. It is a just and reasonable construction to hold that the concluding clauses of the claim were in- troduced parenthetically, and related to the platen which the patentee had previously claimed, and had no reference to the planing or matching which are mentioned in the clauses which im- mediately precede those now under discussion." Strove? et al. v. Halsted et al., 15 Blatch. 95. — ■ Shipman, 1875. 198. The claim of the patent in suit for a flut- ing-machine was : " ' The guide E, constructed with one or more curved or arched portions a, in combination with suitable fluting rollers, substan- tially as herein set forth, for the purpose speci- fied. ' ' ' Thereof the court said : ' ' The paten- tee calls the whole instrument in front of the rollers a guide, but the only material part of it is the curved or arched portion. The expression in the claim — the guide, constructed with a curved or arched portion — is the same thing as saying the curved or arched portion of the guide." Defendant's device had simply a curved or arched portion opposite the plain parts of the rollers between the fluted parts of the rollers, and defendant was held to infringe. Kursheedt v. Werner, 13 Blatch. 530. — Blatch- EORD, 1875. 199. A claim in complainant's patent was : " ' A shirt collar composed of paper and muslin, or its equivalent, so united that the muslin will counteract the fragile character of the paper.' " Thereof the court said : " The claim is not . . . for the mere effect resulting from a union of paper and muslin, nor for the fabric thus pro- duced, nor for the special mode of preparing it ; but it covers the use of it for making collars where its constituents are incorporated with each other, so that the textile strength of the one is made available to reinforce the fragility of the other. And such original application of it to the production of a most useful article, the in- ventor can lawfully claim to appropriate." Union Paper Collar Co. v. White, 2 Bann. & Ard. 60.— McKbnnan, 1875. 300. The patent in suit for .shade-roller was : " For the application to a shade-roller, provided with a spiral spring for automatically raising or rolling up the shade, of a pawl and ratchet, or notched hub, so arranged that the former will engage with the latter at any point or height of the shade, by simply checking the rotation of the roller and the upward movement of the shade under the influence of the spring, substantially as set forth." The court gave this claim a con- struction embracing, " In combination with the other elements, any pawl and ratchet or notched hub, so arranged that the former will engage with the latter at any point or height of the shade by simply checking the rotation of the roller and the upward movement of the shade 136 COIS'STKUCTION OP PATEJSTT— SPECIFIC OASES. under the influence of the spring, substantially as set forth." Hartshorn v. Mmy et al., 1 Holmes,, 493. —Sheplbt, 1875. 301. The claim of the patent in suit for centrif- ugal machine was : " The construction of the openings I in the bottom of the cylinder in such machines, and the valve J, for the purpose of closing the same, substantially as described." Thereof the court said . " ' Such machines ' means such centrifugal machines as are con- structed as to admit of the application and operation of the claimed devices in substantially the described mode and by substantially the de- scribed means. The unauthorized use of the complainant's openings and valve would be an infringement if used in centrifugal machines, to ■which they could be usefully applied by reason of there being an unobstructed space at the bot- tom of the machine into which the sugar could fall, although the cylinder were not suspended from, a flexible elastic bearing like that described in the complainant's patent." Weston et al. v. Nash et al. , 1 Holmes, 488. — Shepley, 1875. 302. For an example of a patent strictly con- strued in view of the state of the art, and there- upon the defendant held not to infringe, see — . Tufts et al. v. Boston Maeh. Co., 1 Holmes, 459. — Shepley, 1875. 203. The claim in complainant's patent for elevator was : " ' Equalizing the strain upon the series of rojjes or chains of my improved ele- vator or hoisting-machine by automatic adjust- ment, substantially as described." Thereof the court said . " This claim can only be construed as a claim for the described means of perform- ing this function, and for well-known substitutes or equivalents of those described means." One of these modes was by means of a rocking lever or system of rocking levers to the ends of which- the suspensory ropes were attached. There was no evidence tending to show that the contrivance used by the defendant, of a series of pistons fit- ting into a set of cylinders with connecting pipes, the cylinders being filled with an incompressible fluid, were at the date of the patent known sub- stitutes for either of the means of adjustment found in the patent. No infringement was found. — lb. 204. The claim in complainant's patent for ele- vator was : " ' Means for manipulatory relative i adjustment, within reasonable limits, of the series of ropes or chains, which are independently at- tached to the winding drum and to the car of the elevator, so that an equal degree of tension can be had upon each rope or chain of the series by proper attention or manipulation on the part of the party having such an elevator in charge. ' ' ' Defendant had put into its elevatois means Of manipulatory adjustment, but such means did not perform the function described by the pat- entee because the tension of the ropes or chains could not be varied by any manipulations of the nuts. No infringement was found. — lb. 305. The claim of the patent in suit for feed- water heater was ; " ' The overflow box c, the pipe b, arranged with reference to the vessel A, substantially as described, and for the purpose specified.' " In the machine the end of the in- duction pipe b, through which the water flowed, was so placed in the overflow box c as to be completely immersed, whereby the steam was prevented from entering the pipe. In defend- ant's machine the end of the induction pipe was not immersed, and the court found no infringe- ment. Stilwell & Bierce M 'f'g Co. v. Cincinnati OasUght & Coke Co. et al., 1 Bann. & Ard. 610. —Swing, 1875. 306. Complainants' patent in suit was for an improvement in saw-mills, and a claim thereof was : " Giving to the saw in its downward movement a rocking or rolling motion, by means of the combination of the cross head working in the curved guides at the upper end of the saw, the lower end of which is attached to a cross- head, working in straight guides and pivoted to- the pitman below the saw with the crank -pin, substantially as described. " In the patented de- vice the guiding grooves at the upper end of the saw were curved, with the concave part of the curve turned down toward the approaching log , as the saw descended the top at first retreated before the log and afterward moved up toward it at the same time that the bottom was moved back and forth in just the opposite direction by being attached to the pitman above tlie cross- head. Defendants used a saw in which the guides were not curved, but they each consisted of two straight lines and represented two con- secutive chords in the curves of the complain- ants', but they were arranged in other respects in the same manner as this curve— namely, hav- ing the anterior angle, like the concave side of the curve, turned toward the approaching log, the effect being exactly the same. Defendants were held to infringe. Ives et al. v.. Hamilton, 93 U. S. 426.— Sup. Ct. 1875. 307. The patent in suit was for an ejector, and " the patented device consisted of a vertical discharge-pipe having a conical lower end im- mersed in the water, and a steam or air-pipe entering the lower end and discharging a jet of steam or air into the discharge-pipe under the surface of the water, whereby the latter was raised and ejected from the pipe. Defendant's CONSTRUCTION OF PATENT— SPECIFIC CASES. 137 device consisted of the vertical water-pipe pro- vided with a T or globe-head at the upper end, througli which a jet of steam passed across the upper end of the water-pipe, exhausting the air therein and causing a vacuum, which permitted the water to rise and he discharged." The claims of the patent were : " ' 1. The combina- tion of the pipes 6 c, arranged so as to be used for the purpose of forcing, blowing, or ejecting the liquids from wells, ships, or other place, as herein described and set forth. 2. The ejector composed of the pipes h and c, the lower end of the pipe h entering within the conif ormed mouth of the pipe c, svibstantially as herein described. 3. The construction and combination for im- mersing in oil or water, in wells or other place, the lower end of pipes arranged so that, by the use of steam or air forced down one pipe, liquids will be forced up the other, substantially upon the principle as herein described and set forth.' " The court found no infringement. Scaife v. A. Fulton Sons & Co., 2 Bann.,& Ard. 235.— Mc- Kennan, 1876. 208. In a patented shade-roller the invention was : "In combination with a spring roller; such an arrangement of pawl and ratchet, with the varying speed of the revolution of the roller mutually acting with each other through the manipulation of the roller, that the pawl would engage with the ratchet by checking the rotation of the roller and the upward movement of the curtain by the simple manipulation of the shade, merely varying the speed of the rotation of the roller." In defendants' device one edge of the recess in the spindle contained a little ball, and the recess was so constructed that when the ball fell into the recess it was forced against the side of the chamber and operated as a detent to stop the revolution of the roller. Defendants were held to infringe. Hartshorn v. Shorey et al., 3 Bann. & Ard. 283.— Shepley, 1876. 209. The patent in suit was for flasks for cast- ing iron pipes, and a claim thereof was : " ' The combination, substantially as set forth, of the two halves A and A' of the flask hinged together, the staples I or their equivalents, the flanges a a, and clamps B B or their equivalents, for the purpose specified. ' " None of the elements of this combination were novel. Complainants did not use hinges on their flasks, but in lieu thereof the faces of the flasks were fastened together ty means of bolts and nuts applied to the flanges on one side, through holes therein provided for that purpose, and defendants were held not to infringe. Smith et al. v. Marshall et al., 3 Bann. & Ard. 371.— McKennan, 1876. 310. The patent in suit was for a loom for weaving irregular fabrics, and a claim thereof was : " The needles or points k k, fixed on a stationary bar K and arranged as specified, so that th/; fabric, being drawn by the take-up proper, is continually carried across the needles, to be received by their points, and to be arrested when a reverse movement of any part of said fabric is commenced, substantially as herein set forth." Defendant's needle-bar consisted of a number of small independent needle-rollers mounted upon ■ a fixed shaft running across the width of the cloth. Each of these rollers rotated forward to the take-up when the cloth was being taken up, but the rollers were prevented from moving backward, when the reed receded, by a ratchet and pawl applied to each roller. Each roller then became stationary, arrested the fabric when Bi reverse movement commenced, and pre- vented the cloth from being drawn back when the take-up mechanism released it. Defendant's rotating bar was a stationary bar when not need- ed, but when needed it accomplished the practi- cal result of arresting and holding the cloth. Defendant was held to infringe. Carstaedt v. U. S. Corset Co., 13 Blatch. 371.— Shipman, 1876, 211. A claim of the patent in suit was : "The screw-threaded metallic bung-bushing, made tapering upon both its outer and inner sides, and provided with thefiange B, having the V-shaped notch d, as and for the purpose described." Thereof the specification said ; ' ' We do not wish to confine ourselves exclusively to the V-.shaped projection, as any form that will prevent the core from lurning independently of the bush will produce the same result." Defendant's wrench did not carry a core fitting closely into the bush, nor engaging with it by any projection or corresponding cavity. It carried an eccentric ribbed boss or bit of metal fitted upon a part of the .surface of the loosely fitting core and, upon turning the core, the eccentric boss was pressed against the inner surface of the bush, and the friction thus caused was sufficient to turn the bush into the barrel. Defendant was held not to infringe. Cornell v. Littlejohn, 2 Bann. & Ard. 324.— Johnson, 1876. 212. The patent in suit was for a cotton press. One claim thereof was for a press-box confined within a revolving frame composed of metallic bars and cross-ties and a bed botton.. ■ Defend- ant used wooden bars, bolts, and rods, and was held to infringe. Wicks v. Stevens, S Woods, 310.— Bhadlet, 1876. 213. The patent in suit was for a cotton-press. One claim thereof was for a collar surrounding a stationary nut and placed between the metallic 138 CONSTRUCTION OF PATENT— SPECIFIC CASES. cross-ties or their mechanical equivalents. De- fendant used, instead of a collar having the specific form of complainant's patent, a metallic arch having an eye in it, accomplishing the same purpose, and was held to infringe. — lb. 214. The claim in Andrews' driven-well pat- ent was : " ' What I claim as my invention and desire to secure by letters-patent is the process of constructing wells by driving or forcing an instrument into the ground until it is projected into water, without removing the earth upward as it is in boring, substantially as herein de- scribed.' " The court said : " The words ' the process of constructing wells, substantially as herein described, ' are . . . equivalent to ' the herein-described process of obtaining a supply of water from the earth. ' ' ' TThe court construed the patent to be a " patent for a process, and . . that the element of novelty in this process consists in the driving of a tube tightly into the earth, without removing the earth upward, to serve as a well-pit, and attaching thereto a pump, which process puts into practical use the new principle of forcing water in the water-bearing strata of the earth from the earth into a well- pit, by the use of artificial power applied to create a vacuum, in the manner described." Andrews et al. v. GarTnen; 13 Blatch. 307. — Benedict, 1876. 215. In complainants' patented device there was a handle, and in one end of the handle a small engine for furnishing motive power for actuating the cutting bar, the steam being brought into the handle in a flexible tube. The claim in the patent was : " ' The shearing im- plement, consisting of the handle and comb-plate extending from its end, the engine supported by said handle and a moving shearing cutter ar- ranged to operate with the comb-plate, and operated by said engine through power supplied from a reservoir situated at any desired point, substantially as described.' " Defendants' de- vice differed from the patented device in that the whole handle was divided at its rear portion into two air-tight chambers by a central flexible partition, operated by the alternate admission and withdrawal of air so as to vibrate laterally a lever connected with the diaphragm, which communicated the desired reciprocatory motion to the cutting device. Defendants were held to infringe. Earle et al. v. Harlow et al. , 2 Bann. & Ard. 264.— Shbplet, 1876. 218. Complainant's different patents in suit all related to a class of machines for polishing the edges of the heels and soles of boots and shoes, in which there was a combination of cer- tain mechanism for holding the sole or heel or both to be polished with the mechanism of the polishing tool, under such conditions of mechan- ical combination that either the holding mech- anism, with the material held, could be so moved as to bring the surfaces to be polished iij proper relation to the polishing tool, or the polishing tool could be so altered as to bring it into proper relation ^th the surfaces of the material to be polished, held by the holding mechanism. In defendants' machine the holding mechanism was dispensed with, and the operator put the shoe into proper relation with the polishing tool and held and kept and guided it there by and with his own muscular strength and will. De- fendants were held not to infringe. Bweetser v. Helms et al., 2 Bann. & Ard. 263.— Shepley, 1876. 217. Complainants' patent was for vulcanized rubber as a part of the valve of a steam gauge. Defendants used for that purpose " an elastic packing composed of at least four tenths of finely pulverized refractory earthy or stony material, intimately mingled with and held together by rubber, for vulcanizing, and then vulcanized, as and for the purpose described." Defendants had taken the principle or idea of the complain- ants' patent, and were held to infringe. Dalton et al. V. Nelson et al., ISBlatch. 857. — Shipman, 1876. 218. The claim in complainant's patent for clothes- wringer was : " In a wringer having a pair of squeezing rollers, and an operating crank and two uprights or standards, the employment of clamping means arranged to take hold of the tub at or near the base of each standard. " The court held that this claim must be limited to a combination in which a swivel or its equiva- lent was employed as a part of the clamp, and under that construction defendant was held not to infringe. Metropolitan Wringing Mach. Co. v. Tming et al., 14 Blatch. 46.— "Wallace, 1876. 219. The claim in complainant's patent was for " the combination of nitroglycerine with infuso- rial earth or other equivalent absorbent sub- stances as a new explosive compound. ' ' Defend- ants used a so-called mica powder prepared by pouring thereon tri-nitroglycerine at a tempera- ture of about seventy degrees, in the proportions of about fifty-two and one half pounds of tri- nitro-glyceriue to about forty-seven and one half pounds of mica scales, in such a manner that the surfaces of the scales were coated with the tri- nitro glycerine. Defendants were held to in- fringe. Atlantic Giant Powder Co. v. Moicbray et al, 2 Bann. & Ard. 442.— Sheplet, 1876. 220. A claim in complainants' patent for im- provement in boots and shoes was : " The self- CONSTKUCTION OF PATENT— SPECIFIC CASES. 139 inclining metallic screw -peg A, having a flattened wedge-shaped end, whereby, as it stTikes the metal plate upon the last, in the act of driving, it is adapted to he bent down into the inner sole of the boot or shoe. " In the prior art there was ii corrugated nail having a uniform diameter from head to point, with a head of the usual and common form, with the point conical or four sided, and the body was corrugated or serrated, but not in the form of a screw ; it differed from complainants' patented screw-peg in three par- ticulars : first, it had a head ; second, a conical j or four-sided point ; third, the body was cor- i rugated. One vital difference between com- plainants' screw-peg and that of defendants' was that complainants' had a body of the same size, while defendants' nail was cut tapering from the driving to the entering end of the nail. Defend- ants were held not to infringe. Estabrook ei al. \. Dunbar et al., 3 Bann. & Ard. 427. — Shbp- LET, 1876. 221. The patent in suit was for a tailor's press- ing machine, and a claim thereof was: "The lever, the jointed arm, the goose, and the treadle, when connected together and arranged relatively with each other and the press-board, so as to operate as and for the purpose set forth." In the machine of complainant's patent the lever was described as being in a perpendicular posi- tion, while in defendants' machine it was shown in u horizontal position. The difference was held to be forma], and defendants were held to be in- fringers. Storrs V. Howe et al., 4 Cliff. 388. — Clifford, 1876. 323. The invention of the patent in suit con- sisted " in uniting the comparatively solid sub- stances which are employed at or near the front part of billiard cushions with the elastic founda- tion of the cushions, by placing the more solid substances in a mould and allowing the melted rubber to flow against or around the same, so that it shall surround the back and end of the edges, and thus securely confine it." In the manufacture of defendants' cushions the com- pound band was surrounded entirely by i-ubber along the whole length of the cushion, and just within it, in a line parallel to the face, against which, in the use of the table, the ball struck, the location of the compound band was attained by suitably securing it in the rubber cushion mould before vulcanization. Defendants were held to infringe. Collender v. Oame et al. , 4 Chff. 393. — Clifford, 1876. 233. The claims of the patent in suit were : "1. The forming one, two, or more creases in cloth by means of markers on opposite sides of the cloth, one of which is connected with the feed of the machine and the other operates si- multaneously with the vibrations of the needle in a sewing-machine, whereby the crease or creases are formed in the cloth itself, parallel to the line of sewing, in such manner that the cloth is ready for doubling over at the creases for the next line of sewing. " " 2. Marking a line on the surface of cloth or other material sewed in a sewing- machine, by means of a pencil or similar article pressed upon the surface of the cloth at the time the needle perforates the same, and is raised therefrom when the deed takes place, so as to produce a series of marks parallel and simul- taneous with the line of sewing." The court said : ' ' The invention described in the first claim is merely the described apparatus for form- ing one, two, or more creases in cloth by means of markers on opposite sides of the cloth, for the purpose and in the manner and by the means therein described, it being clearly understood that the patentee does not claim the described means of attaching the patented apparatus to a sewing-machine. [3] . . The invention de- scribed in the second claim is merely the de- scribed apparatus for marking a line on the sur- face of cloth or other material sewed on a sew- ing-machine by means of a pencil or other similar article pressed upon the surface of the cloth at the time the needle perforates the same, for the purpose and in the manner and the means described, excluding the means by which the patented apparatus is attached in a sewing- machine." The court further said : " The dis- tinct features of the invention consist in the ele- vated bar projecting out of the frame attached to the presser-foot, and the described spring- arm, the bar projecting out from the needle-arm with the described points, and the bed-plate on which they strike. " Of defendants' apparatus the court said : " There is in the apparatus of the respondents a pivoted double-spi'ing blade operating on both sides of an upwardly-project- ing point. Effective means for operating that blade are also shown, and it appears that they consist in a spring-arm attached to the bed-plate of the marker, which extends over the double blade, and that a vertical slot is , made in the spring-arm through which the needle passes, and allows the lower end of the needle-arm to force the spring down on to the double blade while the cloth passes under the blade and over the sharp point, by which the elasticity of that portion of the cloth is lessened, so that it will readily bend to form a tuck at the marker." Defendants were held not to infringe. Fuller et al. V. Tentzer et al, 94 U. S. 388.— Sup. Ct. 1876. 140 CONSTRUCTION OF PATENT— SPECIFIC CASES. 224. A- claim of the patent in suit was : "I claim the ahove-descrihed new manufacture of the deodorized heavy hydrocarbon oils suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil from hydro- carbon oils, by treating them substantially as hereinbefore described." This was held to be a claim for the process and not for the product. Merrill v. Teomans et al., 94 IT. S. 568. — Sup. Ct. 1876. 235. A claim of the patent in suit was : " The plate of hard rubber or vulcanite or its equivalent for holding artificial teeth, or teeth and gums, substantially as described." Of this tbe Supreme Court said : " The invention . . . is a product or manufacture made in a definite manner. It is not the product alone separated from the process by which it is created. ' ' Smith V. Goodyear Dent. Vul. Co. etal., 93 tJ. S. 486. —Sup. Ct. 1876. 226. The claims of the complainant's patent in suit were : "1. The construction and arrange- ment of a portable and adjustable dam in sliding or telescopic sections, in the manner and for the purposes described. 2. The combination of tlie self-anchors with the dam, in the manner and for the purposes set forth. 3. The combination of the boats, supports, or floats with the dam, and the arrangement of anchors to hold the boats in position, in the manner and for the purposes described. 4. The combination and arrange- ment of windlasses, chains, and boats with the dam, so that by the construction thereof a series of drills may be operated within and en- closed by the dam, in the manner and for the purposes described in the specification." De- fendant's apparatus was held not to infringe : " [1] Because the dam, when in position for work, is not suspended from the boat or any other floating structure. [2] Because the funnel of the dome in the respondent's apparatus, though it is capable of being adjusted at different heights, is not and never was self-adjusting to various depths of water. [3] Because it has no self-anchors, free to slide and self-adjusting at all times while the apparatus is in use." Cam- meyer et al. v. Newtonetal., 94 U. S. 225.— Sup. Ct. 1876. 227. A claim of a patent for a middlings puri- fier was for a collecting chamber in connection with a blower, air-pipes, and valves for feeding and delivering the meal without allowing the air to pass therewith. Defendants used a flat bolter instead of a reel, and used different kinds of valves for feeding and delivering the meal, but were held to infringe. Cochrane et al. V. Deener et al., 94 U. S. 780.— Sup. Ct. 1876. 228. Complainant's patent in suit was for a toy, and the claims thereof were : " First, for the combination of a hollow elastic toy of rub- ber or the like, with a reed or other speak- ing device, so that by compressing the toy the reed or other device is made to speak ; and, second, for joining the two parts by a groove in the frame of the reed, around which the rubber will close tightly by its elasticity when the reed frame is inserted through a small hole cut out of the rubber. " Defendants manufactured the exact thing and something more ; they prolonged the frame of the whistle so that it also served as a handle to the toy, and added a common whistle to the end of the handle. Defendants were held to infringe. N. T. Rubber Co. v. Chaakel et al., 9 O. G. 923.— Johnson, 1876. 229. The patent in suit was for a whip-socket. In'the patented device there was a tightening lever in one side of the socket. Defendants us.ed an entire half of the socket as a lever, and were held to infringe. Searles et al. v. Van Nest et ai., 3 Bann. & Ard. 121.— Wheeler, 1877. 230. Complainant's patent was for the Blake stone crusher, in which the movable jaw received its movement from the revolving shaft through iron rods and levers, while in respondent's ma- chine it was communicated from the revolving shaft through a confined column of water. Re- spondents were held to infringe. Robertson et al. V. Blake, 94 U. S. 728.— Sup. Ct. 1877. 231. A claim of the patent in suit was : ' ' Making the cutter which cuts the paper from the roll in such form that in cutting off the paper it cuts it in the required form to fold into a bag, without further cutting out." " The as- signor of the complainants was the first jjerson to organize an operative machine to make paper- bags from a roll of paper in the flat sheet by a transverse cut across the same with a knife hav- ing five planes, so that the blanks, so-called, when cut and folded, will represent a paper bag of the form and description given in the speci- fication and drawings of the patent." Wide differences existed between the patented machine and that of respondents as regards certain operat- ing parts, but respondents were held to infringe. Viiion Paper-Bag Go. et al. v. Murphy et al. , 97 U. S. 120.— Sup. Ct. 1877. 232. The patent in suit was for a fluting-ma- chine, the operation of which was to crimp the material in parts and to irregularly puff the un- crimped parts ; that part of the machine to ac- complish the irregular puflSng consisted of a double-plated segment of a hoUow cylinder, the CONSTIIUOTION OP PATENT— SPECIFIC CASES. 141 arch of which was upward and so arranged with regard to tlie fluting rollers that the part of the material intended to be puffed passed first be- tween the plates of this arched guide and was presented to the plain surface of the roller with the width of the strip, increased by the differ- ence between the lines of the curved or arched surface of the cylinder and the plain or hori- zontal surface of the roller which received it. The claim was : " What I claim as new and de- sire to secure by letters-patent is the guide E, constructed with one or more curved or arched portions a, in combination with suitable fluting rollers, substantially as herein set forth, for the purpose specified." In respondent's machine the redundancy of material was produced by passing it over a smooth flat surface and, while passing, a detent or finger was applied to that part not to be fluted which, by reason of the pressure of a spring, held back that part of the material. Respondent was held not to infringe. Werner y. King, 96 U. S. 318.— Sup. Ct. 1877. 233. The patent in suit was for a printer's galley, and a claim thereof was ; " The com- bination of the edge-rail and its metallic facing or lining by means which secure their union and leave the metallic facing or lining smooth or free from perforations or similar Interruptions, sub- stantially as and for the piirpose set forth. ' ' De- fendants used L-angle metal facings for ledges, with smooth, unperforated face, supported by a wooden rail attached to it by screws through the bed-plate and the bottom part of the L. Re- spondents were held to infringe. Hoe et al. v. Coleet al., 13 O. G. 500.— Wheeler, 1877. 234. The claims of the patent in suit were : " 1. A rotary blower-case the interior of which is made true by means of plaster- of -Paris or its equivalent, applied as described. 2. Such a blower-case the ends of which are made true by the application of plaster or a like material, as described. 3. Such a blower-case the concaves of which are made true by the use of such ma- terial, applied as described. " The court consid- ered these claims together ; what was done by respondents differed in nothing from the pro- cess and means employed by complainant, ex- cept that respondents used a compound of glyc- erine and litharge instead of plaster-of -Paris ; and respondents were held to infringe. Hyndman v. Boots et al., 97 U. 8. 234.— Sdp. Ct. 1877. 335. A claim of the patent in suit was : "4. Such a blower-case having the concave arcs, in combination with the end plates, so arranged as to admit of the abutments being introduced or removed without requiring the case to be taken apart, as described." Respondents' case was cast in two parts, but was held to infringe. —lb. 236. The patent in suit was for an improve- ment in iron bridges, and the claims thereof were : "1 do not claim the use of the eye-bars or links as chains of suspension bridges, but what I claim as my invention and desire to se- cure by letters-patent is : 1. The construction in the lower chords of truss-bridges of series of wide and thin drilled eye-bars CO, applied on edge between the ribs SS on the bottom of the posts, and connected by pins PP, supported in the diagonal tension-braces D and E, all substan- tially as herein described. " It was held that the claim of the inventor did not extend to any other eye-bars or chords than such as were made wide and thin and applied on edge ; and as those con- structed by respondent were cylindrical in form, only flattened at the eye, for insertion between the ribs or projections of the posts, the respon- dent was held not to infringe. Keystone Bridge Co. V. Plwinix Iron Co., 95 U. S. 274.— Sup. Ct. 1877. 237. The patent in suit was for an improve- ment in sieves. The claim of the patent was :• " The combination of the hoop A and sieve- cloth C when the edge of the sieve-cloth is clasped within the hoop and thus fastened by swaging, substantially as and for the purpose specified and shown." The defendant's sieve had a wire mesh connected with the rim by what is known in the mechanical arts as ' ' double seaming." Defendant was held not to infringe. Adams & Westlake M'fg Go. v. Bt. Louis Wire Goods Go., 3 Bann. & Ard. 77.— Treat, 1877. 238. A claim of the patent in suit was : " 1 claim the combination of the separate bearings of the cylinder with a single shaft-bearing in the cylinder, shorter than the cylinder and larger than the shaft, in the manner and for the pur- poses substantially as specified." The court held that " the words ' shaft-bearing in the cyl- inder, shorter than the cylinder and larger than the shaft, ' were intended to be limited to that class of machines having cylinders, and not flanged disks or wheels, for the distribution of seeds ;" and as defendants' machine was not of the cylinder class, defendants were held not to infringe. Moore et al. v. Thomas et al., 3 Bann. & Ard. 13.— Brown, 1877. 239. The claim of the patent in suit was : " I claim a distributing- cylinder for seeding-ma- chines, having a bevelled bearing, substantially in the manner and for the purposes specified. " The court held this claim to be Umited to that class of seeding-machines having distributing cylinders, complainant evidently having refer- 142 CONSTEUCTION OE PATENT— SPECIFIC CASES. ence to a periphery-feeding cylinder set forth in his specifications ; and as defendants used dislis, they were held not to infringe. — li. ' 240. Complainant's patent was for improve- ment in the manufacture of bolts and round rods. The claims of his patent were : "1. The process, substantially as hereinbefore set forth, of forming, from a round piece of metal, a heat- ed bolt blank, having an angular neck and a round stem, which process consists in subjecting a portion of the length of the round piece of metal to lateral swaging or compression on all sides simultaneously to form the angular neck, and, while the piece is firmly held with the neck portion enclosed at all sides, upsetting the pro- jecting end of the swaged piece of metal to form the head of the bolt blank. 2. The process, sub- stantially as hereinafter set forth, of forming the angular neck and protuberant head of a bolt, which consists in subjecting a round piece of metal to lateral swaging between angular- grooved dies, the end surfaces of which dies, when closed, form the anvil against which the projecting end of the swaged piece of metal is upset and formed into a head by proper ma- chinery." The court held that what the pat- entee had invented was a new way of manufac- turing bolt blanks by the described swaging dies to be used in connection with upsetting machin- ery, and that his invention was a method or process consisting in the combination of the operation of swaging the blank laterally by the said dies with the operation of upsetting the end of the bolt to form the head. Defendants' ma chine brought about the same results, but in a somewhat different way, and was held not to in- fringe. C larky. Kennedy M'fg Co. etal., 14 Blatch. 79.— Shipman, 1877. 241. Complainant's patent in suit was for a machine for cutting the soles of shoes by means of a die borne upon a shaft. After each cut the die rose, made a half revolution, and then made another cut. In defendants' device a shaft was not present, but there was used in lieu thereof a sleeve. Defendants were held to infringe. Maynadier v. Tenney et al., 2 Bann. & Ard. 615. — SiTEPLEy, 1877. 243. Complainant's patent was for making cartridge cases, and the claims thereof were : " First, the mandrel which carries the cartridge shell in combination with the die D, which ad- mits the same, and against which the clo.sed end of the cartridge shell is headed, substantially as described. Second, the die constructed and operating for the heading of cartridge shells, substantially as described. " In defendants' ma- chine there was found the same die, mandrel, and hunter operating in the same manner to form the flanged head of the cartridge, except that in defendants' machine the bunter moved toward the die to head the shell, while in com- plainant's machine the die moved toward the bunter. Defendants were held to infringe. Union Metallic Cartridge Co. v. U. 8. Cartridge Co., 3 Bann. & Ard. 593.— Sheplet, 1877. 243. Complainant's patented improvement was a marine paint compounded of, first, a suit- able vehicle or medium ; second, the oxide of cop- per, yielding a poisonous solution in water, and, third, such earthy and mineral matters as sepa- rate the particles of oxide and retard such solu- tion. Defendants used as the poisonous ingre- dient an arsenite of copper, and they were held to infringe. Wonson v. Oilman et al., 3 Bann. & Ard. 590.— Sheplet, 1877. 244. Complainant's patent was for an improve- ment in augers, bits, etc. , and the claims thereof were: "1. The combination of the barrel A, provided with a socket C, jaws B and D, and nut N, working on a screw for holding a boring- tool, substantially in the manner described and specified. 2. The socket C of the barrel A, hav- ing cavities b i, in combination with the jaws B D, having curved ends to fit therein, to allow the necessary lateral movement in the socket without falling out, substantially as described j and specified. ' ' The peculiar features of the i patented handle consisted in combining with the ! handle a slotted cylinder, jjrovided with a rec- tangular tapering bore for holding a tool-shank and hinged jaws working in the slot, having lat- eral movement and receiving different sizes of tools, and a nut moving on a screw-thread upon the circumference of the cylinder. In defend- ants' tools there was a threaded and slotted cyl- inder, loosely holding a pair of movable jaws pivoted at the foot, and enclosing a bit shank, which they were made to clamp by the action of an encircling nut. The tapering bore of com plainant's patent was transferred in defendants' braces to the faces of the jaws. Defendants were held to infringe. Miller's Falls Co. v, Ives etal., 14 Blatch. 169.— Shipman, 1877. 345. The claims of complainant's patent in suit were : "1. In a trunk, and in combination therewith; a tray, removably hinged in the body of said trunk, substantially as and for the pur- pose set forth. 3. In a trunk a compartment tray provided with the strap hinges In combina- tion with sockets attached to the back and inside of the trunk body, substantially as described, for the purpose of removably hinging the tray." There had been removably hinged trays in the covers of trunks, but not in the bodies, and the CONSTRUCTION OF PATENT— SPECIFIC CASES. 143 court held complainant entitled to a broad con- struction of the claims. Defendant did not use complainant's strap hinge and socket, or roller and socket, but was held to infringe. Volger v. Semfle, 7 Bissell, 383.— Blodgett, 1877. 346. A claim of complainant's patent in suit was; "A concrete pavement laid in detached blocks or sections, substantially in the manner shown and described." Complainant formed his joint by the permanent interposition of some material between the blocks. Defendant formed his joint by the insertion of a cutting instrument between the blocks ; then removed the instru- ment, leaving the joint an open one for a time. Defendant was held to infringe. SchilUnger v. Gunther, 14 Blatch. 152.— Shipman, 1877. 347. A claim in complainant's patent in suit was : " A plug of tobacco having a hard label pressed into one of its faces, as specified. " As the specification described only the mode of ap- plying the label to the plug underneath the outer covering, defendants contended that the words " as specified " limited the claim to that particular mode. The court held otherwise. Lonllard et al. v. McDowell et al., 3 Baun. & Ard. 531.— McKennan, 1877. 348. Complainant's patent in suit was for a rock-drill. The claim thereof was : " In com- bination with a revolving and progressing bor- ing-head, having cutting points projecting be- yond the periphery thereof, a hollow central drill rod through which the water is forced or passed." Defendants' drill was an exact imita- tion of the comjjlainant's device, with the excep- tion that, in the place of the annular boring-head, there was substituted a convex boring-head, with two holes in its surface. Defendants were held to infringe. Am. Diamond Rock-Boring Co. v. SuUimn Macli. Co. et al., 14 Blatch. 119. — Ship- man, 1877. 249. A patent for an improvement in bush- ings and wrenches for barrels was reissued in two divisions. The claim of Division A was : " The wrench herein described, consisting of a shank A, plate B, ^projection D, and core E, the said core adapted to fit the opening through the bushing, whereby the same is prevented from assuming an oblique position when being turned into place, substantially as described." The claim of Division B was : " The screw -threaded metallic bung- bushing, made tapering upon both its outer and inner sides, and provided with the flange B, having the V-shaped notch d, as and for the purpose described." The court consid- ered these patents as constituting substantially one patent to accomplish a particular purpose. Defendant used a bushing, and also a wrench with a core, but adopted another method than that shown in the patent by which the engage- ment took place between the wrench and the bushing, so as to hold the bushing fast while it was being inserted in the barrel. Defendants were held to infringe. Cornell v. Downer & Bemis Brewing Co. et al., 7 Bissell, 346. — Drummond, 1877. 350. Complainant's patent in suit was for " a combination of nitro-glycerine with infusorial earth or other eqiiivalent substance. ' ' The sub- stance used by defendants in combination with nitro-glycerine was mealed powder of nitrate of soda, charcoal, and sulphur, in proportions the same as in some gunpowder in common use in granular form. This mealed powder of defend- ants, like complainant's infusorial earth, re- tarded the explosion of the nitro-glycerine under similar circumstances. But when it was explod- ed the mealed powder co-operated in the explo- sion, which the infusorial earth could not do. Defendant was held to infringe. Atlantic Oiant Powder Co. v. Ooodyeav, 3 Banu. & Ard. 161. — Shepley, 1877. 251. A claim of the patent in suit was : " ' A wooden pavement composed of blocks of any desired wood, cut from the trunks or branches I of trees or saplings, of any desire^d length, in their natural form, the bark only being removed, placed with their fibres vertically upon a bed of broken stone and gravel or sand, or either of ! them, the spaces between the blocks being filled I with gravel or sand, the whole made compact by I ramming, rolling, or other proper method, as i herein shown and described.'" Defendants' i blocks were cut from the trunks and branches of trees or saplings in their natural form, except that a segment of from one half an inch to one and a half inches in thickness was split from one side of the block. The court held that this was merely a substitute. Phillips et al. v. City of Detroit, 3 Flippin, 93.— Bkown, 1877. 253. The claim of the patent in suit was : "[1] The within-described method of forming the eye of picks, consisting in first punching the bar ; second, in setting down the metal on either end around the eye ; and, lastly, drawing down on a mandrel between rolling dies, substantially as described and shown. [3] The dies E, con- structed as described, for drawing down the eye, substantially as shown." The distinguishing merit of the invention consisted in supplying dies of novel construction and form, adapted to forming the eyes of picks by a new method, and combining with the old steps in forming the eyes of picks a new element, drawing them down on a mandrel in rolling dies, which completely en- 144 CONSTEUCTION OF PATENT— SPECIFIC CASES. compassed the -walls of the eye. Defendants, after punching the iron bar out of which the pick was to be formed, set down the metal on either side of the eye, and then drew down the eye on a mandrel between rolling dies which entirely enveloped the wall of the eye. The dies of complainant and defendants differed some- what in form and in number of parts. Defend- ants were held to infringe. Klein v. Park et al., 3 Bann. & Ard. 145.— McKbnnan, 1877. 353. Following the decision of the Supreme Court, the Circuit Court held the Cummings pat- ent for artiticial gums or palates to be for a " product or manufacture made in a defined manner. It is not a product alone separated from the process by which it is created. The claim refers in terms to the antecedent descrip- tion, wiitliout which it cannot be understood. Tlie process detailed is thereby made as much a part of the invention as are the materials of which the product is composed." Defendant used celluloid for making his dental plates, and the pi-ocess of making, therefore, differed from the Cummings process. Defendant was held not to infringe. Goodyear Dental Vulcanite Oo. V. Davis, 3 Bann. & Ard. 115.— Sheplby, 1877. 254. Complainants' patented improvement in cans consisted in pi'oviding for opening cans, without cutting them or unsoldering, by making a slot around the part to be removed, placing a wire in the slot, with one end projecting and connecting the sides of the can with solder over the wire, so that by pulling on the wire it would divide the solder to leave the part to be removed free. Defendants' device consisted in placing a narrow strip of metal with a projecting end over a similar slot and soldering the end of the strip to those of the slot, so that, by lifting the strip outward, it would divide the solder at the edges, uncover the slot, and leave the par.t to be removed free. Defendants wei'e held not to infringe. De Florez et al. v. Saynolds et al., 14 Blatch. 505.— "Whbelbr, 1878. 355. The patent in suit was for a machine for fixing metallic rings to umbrella-cases, and a claim thereof was : " In a machine for clasping the metal binders to umbrella-covers and cases, a hollow heated post or holder, E, for the umbrella- case, for the purpose stated." Defendant sub- stituted for the hollow, fixed, internally heated iron post of complainant's patent, a solid, remov- able and externally heated iron post over which the umbrella-case, having been drawninside out, was drawn or passed. The metallic ring which was to be fixed to the smaller end of the umbrella- case was fitted over the end of the anvil-post, and then, instead of bringing down the hammer upon the post, he raised up the post by means of a treadle until it struck the immovable case having a hollow, into which the top of the post entered, whereby thp clasping of the ring to the umbrella-case was effected. Defendant was held to infringe. Odior')ie v. Denney, 8 Bann. & Ard. 387.— Nixon, 1878. 356. Complainant's patent was for improve- ment in' tempering umbrella ribs and similar articles, and a claim thereof was : " Construct- ing the tempering die with a square hole, corre- sponding in size to the wire to be tempered, in order that the wire may be straightened in all directions and the flattened portions of the wire be brought in line with each other, as and for the purpose specified. " Defendants made umbrella frames with ribs of U-shaped wire ; defendants' dies were formed of two plates, one above and one below, the groove in one plate being shallow and semi-elliptical and the groove in the other plate broader and deeper ; the hole in defend- ants' dies was not a square hole. Defendants were held to infringe, the court saying : " The fair construction of the first claim, in connection with the body of the specification, is a claim to the mode or process of tempering and straight- ening a rib which has a body, and flattened por- tions other than such body, by drawing the rib through a straight hole or groove in a heated metallic die of the proper size and shape to at once embrace closely the body of the rib, and yet, by supplemental spaces in the groove, to al- low such flattened portions to pass through freely and be brought in line with each other. " Am. M'fcj Co. V. Lane et al., 14 Blatch. 438.— Blatchpohd, 1878. 257. The patent in suit was for a machine for graduating carpenters' squares, and a claim therefor was : " In a machine for cutting grad- uations on squares, etc. , the combination of the gravers I and their holders H with cams G and springs d, for throwing the gravers out of action at predetermined periods of time during the stroke of the same to cut graduation marks of varying lengths, substantially as described." Complainant's machine contained an entire set of gravers revolving in a true circle, while the square remained stationary. Defendants' ma- chine had but one graver, and the square was moved along by an intermittent feed. The graver returned to its work after one mark had been made in the flattened circle. Both ma- chines had the " flying cut." Defendants were held to infringe. Hart, Bliven & Mead M'fg Go. v. Swrgeant et al., 3 Bann. & Ard. 363.— Shipman, 1878. 358. A claim of the patent in suit was : CONSTRUCTION OF PATENT— SPECIFIC CASES. 145 " ' Artificial alizarine produced from anthracene or its derivatives by either of the methods herein described, or by any other method which will produce a like result. ' " Defendants contended that alizarine was a well-known substance long before the patent, and that the patent was void as claiming such substance broadly. The court iR'ld otherwise, and held that the patent covered ii new composition of matter and new manufac- ture having the properties described, produced from anthracene by any process capable of pro- ducing that new product. Badische Anilin & Soda Fabiik v. Hamilton M'fg Co., 3 Bann. & Ard. 235.— Shepley. 1878. 2.59. The patent in suit was for an india-rub- ber door-mat having three essential features, to wit : first, a flexible gum mat ; second, flexible gum ridges to serve as scrapers ; third, cells to contain the dirt. Defendants manufactured cer- tain articles designed to constitute the steps of wheeled carriages and cars ; they had little hemispheres of rubber projecting less than a quarter of an inch, or small pyramids of rubber half an inch s(juare at the base and one eighth of an inch high. Defendants were held not to infringe. Brown et al. v. Rvhber Step M'frj 0>. et al., 3 Bann. & Ard. 232.— Shepley, 1878. 260. A claim of the patent in suit was : "Uniting the parts employed in forming com- bination billiard cushions by placing the harder or more dense and less elastic substance in a mould, and allowing the melted rubber to flow against, around, or into the harder or more dense and less elastic substances, or causing the plastic rubber, by pressure, tQ unite with the same, and then vulcanizing the india-rubber, substantially as and for the purpose set forth." This was held to be a claim for a process, and articles having the same resulting construction, but not made by the process in question, were held not to infringe. Colander v. Bailey, 3 Bann. & Ard.' 317.— Shepley, 1878. 261. The patent in suit was for an attachment to whip-sockets for fastening them to carriages ; the device used was a clamp, one arm of which was formed of projections on the side of the socket, and the other of a lever of the third order, both curved to fit the dash-rail of a carriage, the same being worked by a screw and nut. De- fendants used two different kinds of attachments which had a clamp ; one was made up of pro- jections from the socket, a bar to go behind the dash-rail, and two screws with nuts, one each side of the rail. The other had like projections and a bar, to go behind the rail, with the bar hinged to one projection at one side of the rail, and worked by a nut and screw at the other side of the rail. The prior art approached close to the patentable invention. Defendants were held not to infringe. Merriam et al. v. Van Nest et al, 3 Bann. & Ard. 209.— Wheeler, 1878. 262. The patent in suit was for a sash^lock, and a claim thereof was : " ' A vibrating lever, provided with a bolt, in combination with a strik- ing-plate or hook, and with a catch segment be- hind which the bolt can pass, formed upon the plate upon which the lever is pivoted, the whole constituting a sash-fastener, and the parts enu- merated in the claim being and operating substan- tially as specified. ' ' ' The difference between complainant's device and defendants' device consisted in the fact that in defendants' device the bolt moved in a line perpendicular to the line of the lever instead of moving in a line parallel to the line of the lever, and engaged with a socket upon the base-plate instead of engaging with a projection from the base-plate. This in- vention was a joint invention. The joint inven- tion was within a very narrow compass, and it j was held that the devices held to be equivalents had anticipated it, and that the joint invention could not be made to relate back and include the pre-existing devices, although they were the sole j invention of one of the joint patentees. Hopkins I & Dickinson M'fg Co. v. P. & F. Corbin et al., ' 14 Blatch. 396.-SHIPMAN, 1878. 263. The patent in suit was for a printers' galley ; the improvement consisted of galleys of wooden ledges faced with metal, secured with fastenings back of, and not interfering with, the smooth faces of the ledges, the metal faces being fastened to the wooden ledges by extending the metal back at the top and bottom, and turning flanges on the extensions to be forced into corre- sponding grooves in the wooden rail. The claim of the patent \^as : " The combination of the edge-rail and its metallic facing or lining by means which secure their union and leave the metallic facing or lining smooth or free from perforations or similar interruptions, substan- tially as and for the purpose set forth." De- fendants used an L-angle, metal facing for ledges, with smooth nnperforated face, sup- ported by a wooden rail attached to it by screws through the bed-plate and the bottom part of the L. Defendants were held to iu- fiinge. Hoe et al. v. Tuthill et al., 5 Dillon, 495._-Wheelek, 1878. 264. Complainant's patent for improvement in skates was for a combination of movable Y- slotted blocks, with clamps on the guide rod. Respondent used a lever and eccentrically pivot- ed cam, and was held to infringe. Turrell v. Speath, 14 O. G. 377.-Nixon, 1878. 146 COlSrSTKUCTION OF PATENT— SPECIFIC OASTilS. 365. For an example of a patent construed strictly, and thereupon respondent held not to infringe, see — , Ghieago <& Northwestern R. E. Co. V. Sayles, 97 U. S. 554— Sup. Ct. 1878. 366. Complainant's patent was for "a bronze dressing for leather composed of spirit varnish and aniline fuchsine, . . . either with or without the addition of aniline blue or bronze powder." Instead of aniline blue the respondent used ani- line violet, which consisted largely of fuchsine and aniline blue mixed. The defendant was held to infringe. Cahill v. Brown, 3 Bann. & Ard. 580.— Clifford, 1878. 367. Complainant's patent was for improve- ment in carburetting apparatus, and a claim thereof was : " The application and use of the meter wheel, with its case and contents, as an air-blast apparatus, operated by weights or other- wise, not meaning to claim the method of using the meter for measuring gas." The court said that ; " Taking the claim and specification to- gether, it is intended to claim the meter itself as described, and for the purposes set forth, as con- tradistinguished from an ordinary meter for measuring the flow of gas." Munsonetal. v. Gilbert & Barker M'fg Oo., 3 Bann. & Ard. 595. — Lowell, 1878. 368. The claims of complainants' patent were : ' 1. In a machine for shaping whip-stocks, tlie combination of the two rotating and adjustable clamps for holding the whip-stocks, with revolv- 1 ing cutters whose axis of rotation is at right ] angles to the axis of the stock, substantially as ' described, for the object set forth. 3. In a ma- j chine for shaping whip-stocks, the combination i of revolving cutters, the adjustable and rotating j clamps for holding and revolving the whip- j stocks, and the guides through which the stock | is passed for firmly holding the stock while be- 1 ing dressed by the cutters, as described." De ; fendant made changes in two of the devices ; in- i stead of burrs to scrape off enamel he used \ numerous blades, and he combined the clamping j and advancing mechanism in one device. De- I fendant was held to infringe. Am. Whip Co. '■ V. Lombard, 4 Cliff. 495.— Clifford, 1878. \ 369. A claim of complainants' patent was ; \ " The electro plating of metals with a coating of compact, coherent, tenacious, flexible nickel, of \ sufficient thickness to protect the metal upon i which the deposit is made from the action of corrosive agents with which the article may be brought in contact. " The court held this to be "a claim to the product or coating named in it, having the qualities described in it, when such product or coating is produced by employing the invention covered by the flrst claim." United Nickel Co. v. Harris et al., 15 Blatch. 319.— Blatchford, 1878. 370. ' ' A claim to the method herein described, for preparing the solution of the double sulphate of nickel and ammonia, and the double chloride of nickel and ammonium, . . ."is the same thing as a claim to each solution prepared by the method described for preparing each. — lb. 371. A claim of complainant's patent in suit was : " The arrangement, in a reed musical in- strument, of the reed-board A, having the dia- pason set a and its octave set b, and the addi- tional set L extending from about tenor F up- ward through the scale, substantially as and to the effect set forth." The court held that the invention covered by this claim was not the mere addition to the reed-board of an organ, having two sets of reeds, of an intermediate partial set from tenor F upward, but the addition to such reed-board of such an intermediate set combined in the manner set forth in the speciflcation. Burdett v. Estey et al., 15 Blatch. 349.— Blatchford, 1878. 373. A claim of complainant's patent was : " The reed-board A and the foundation board 6, constructed with the contracting valve open- ings D, F, F, and the reeds arranged in relation thereto, all in the manner described. " Of this the court said that ' ' the expression ' the reeds ' in this claim means the reeds in the two sets and the additional set." — lb. 373. The patent in suit was the Cummings patent for improvement in artificial gums and palates, defendant made a gold plate mounted with rubber holding a single tooth. It was held that defendant infringed. Goodyear Dental Vulcanite Co. v. Preterre, 15 Blatch. 374.— "Wheeler, 1878. 374. Complainants' patent in suit was the Cummings patent for artificial gums and palates, using dental vulcanite ; defendant used celluloid, also rose pearl, and was held to infringe. — lb. 375. The claim of the complainant's patent in • suit was for ' ' the arrangement of tar paper or its equivalent between adjoining blocks of con- crete, substantially as and for the purpose set forth." It was held that the patent was in- fringed by laying sectional cement pavement, leaving metal plates in the joints, afterward withdrawing the plates and pouring pitch into the joints ; also by filling the joints with cement. Schillingery. Gunther, 15 Blatch. 303.— Blatch. 1878. 376. Complainant's patent for gas-burner was for a combination of the regulating valve with a perforated burner and a surrounding tube ; in view of the state of the art, the claim was limited CONSTEUOTION OF PATENT— SPECIFIC CASES. 147 to the form described, and the defendants held not to infringe. lough v. Oilbert & Barker M'fg Co. et al., 3 Bann. & Ard. 533.— Blatch- FOUD, 1878. 377. Complainant's patent in suit was for im- proved catch for spectacle cases, and the inven- tion consisted in producing two coincident in- dentations in the two parts. Defendant made a hole in one part and an indentation in the other, and was held to infringe. Parker v. Hemlwf, 17 Blatch. 206.— Benedict, 1878. 278. The patent in suit was for a mode of pitching the insides of barrels. Complainant's device was a furnace with grate-bars in the bot- tom ; underneath the grate-bars was a pipe com- ing from the blower ; and the heated air went out through the pipe into the bung-hole of the barrel. Defendants had different devices : one in which the fan or blower was attached by a pipe at the bottom ; the air was driven through the fire, there being a grate-bar in the bottom, aod the cask attached upon the pipe. Defend- ants' other machine involved the same principles, but was so adjusted as to receive the casks sus- pended upon hooks, so that the air nozzles fitted in the bung-holes. Defendants were held to in- fringe. Gottfried et al. v. Bartholomae et al., 8 Bissell, 219.— Blodgett, 1878. 279. A claim of the patent in suit, for clock- escapement, was : " The anchor-escapement, con- structed as described, with one pallet, D, having a flag flange, d, and the other pallet, E, bent out, whereby one pallet is made dead beat and the other recoil." The question was whether this claim should be limited to a bent verge. The construction did not appear upon the face of the claim ; there was nothing in the specifica- tion which showed that the essence of the in vention was a bent verge, and a broad con- struction of the patent was supported by its history. It was held that the claim was not to be limited to a bent verge. Terry Clock Co. v. New Haven Clock Co., 3 Bann. & Ard. 332,— SsaPMAN, 1878, 280. The complainants' patent in suit was for a fabric composed of a layer of bituminous ma- terial between sheets of saturated paper increased in thickness by the addition of layers of bitu- minous material when and as desired, Defendants made four kinds of fabric ; each one had one or more layers of bituminous composition. In each of defendants' fabrics the layers were protected on the upper side by saturated paper and in two of them on the under side ; in one of the others unsaturated manilla paper and in others unsatu- rated felt was used. In some of defendants' fabrics cloth, and in others unsaturated manilla, and in still others unsaturated felt paper, was in- serted between the layers. All defendants' four fabrics were held to be infringements. Ready Booflng Co. et al. v. Taylor et al. , 15 Blatch. 94. — Wheelek, 1878. 381. The claim in complainant's patent for grain separator and scourer was for : ' ' The com- bination, with a suction fan, scouring mecha- nism, perforated enclosing shcD, and outer tight casing, of a draught passage connecting the cham- ber outside of said perforated shell directly with the fan case, said passage being provided with auxiliary air inlets qy openings, substantially as and for the purpose set forth." Defendant's machine had " a suction fan arranged above the scourer ; a scouring mechanism, consisting of revolving wings or beaters, attached to the same shaft to which the fan is attached ; a i^erforated shell enclosing the revolving beaters ; an outer tight casing surrounding the perforated shell, but so as to leave a space or chamber between such outer casing and such shell ; a draught passage connecting such chamber directly with the fan case, in such manner that the smut and other adherent matter which pass through the perforations in such shell into such chamber are conducted to the fau without commingling with, or again coming in contact with, the scoured grain, and auxiliary air inlets, in the shape of holes in the upper end of the scouring shell, instead of holes through the outer casing, as in the plaintiff 's machine, " Defendant was held to infringe, Howes et al. v. McNeal, 15 Blatch, 103.— Blatchford, 1878. 282. A claim in complainants' patent for grain separator and scourer was . " In a combined scourer and grain separator the arrangement of the two wind-trunks side by side, in the manner shown and described, and for the purpose here- inbefore .set forth." Defendant's machine had two wind-trunks arranged side by side, each provided with a separate valve and each approx- imating the form of the separator set forth in complainant's patent ; both wind-trunks were connected with the fan ; the scourer had a per- foi'ated case. Defendant's machine was held to infringe. — lb. 388. Complainants' patent was for a machine for making paper bags. The cutter was of the following form : J ~V The first claim of the patent was for ' 'making the cutter which cuts the paper from the roll or piece of the form described, so that in cutting off the paper it also cuts to the required form to 148 CONSTEUCTION OF PATENT— SPECIFIC CASES. fold into a bag, without further cutting out. Defendants' cutter was of the following form ; Complainants' cutter produced no waste of the paper, which was severed between the two blades at the right and left extremities ; defendants' cutter did produce waste paper. Defendants were held to infringe. Union Paper-Bag Mach. Co. et al. V. Pultz & Walkley Go. et al., 15 Blatch. 160.— Shipman, 1878. 284. ' ' In order to ascertain the proper construc- tion of the patent, it is important to know the nature and extent of the invention which was made up by the patentee." — lb. 285. Complainants' patent for improvement in a paper-bag machine was dated July 12th, 1859. July 25th, 1856, E. W. Goodale, brother of the patentee, made application for patent, which was rejected ; the model in that application contained a cutter of the same kind as that used by defend- ants and judged to be an infringement ; B. W. Goodale never made a machine of full size. William Goodale knew of what E. W. Goodale had done. Defendants were held to infringe. —lb. 286. Complainant's patent was for a marine paint composed of oxide of copper, an earthy or mineral base, and a vehicle or medium. De- fendants used in their paints sulphuret of anti- mony, an earthy or mineral matter, which dis- solves in water more slowly than the oxide of copper ; defendants used it in combination with oxide of copper and a suitable vehicle or medium. Defendants were held to infringe. WoTison v. Peterson et al., 3 Bann. & Ard. 249. — Shbp- LEY, 1878. 287. The claim of the patent in suit was : " In combination with a stove-oven a hinged shelf fitted to fall outward and down automatically when the oven door is opened, and to be raised up by closing the oven door, adapted to operate upon it for that purpose, substantially in the manner and for the purposes herein set forth. " Respondent's stove had the same hinged shelf to which the patent related, but instead of operating from below, as described in the patent, it operated in a similar manner from above. It was old to use a hinged shelf in combination with a stove-oven, without the patentee's device for raising it up and letting it down by means of the opening and closing of the door ; the cam used for this purpose by the patentee was old ; and respondent was held not to infringe. Bridge, Beach <& Co. v. Bxcelsior M'f'g Co., 17 0. G. 259.— Dillon, 1879. 288. Complainant's patented invention con- sisted of "a skirt protector having a fluted or plaited border bound with or composed of enamel cloth or other water-proof material, as distinguished from a skirt facing. ' ' Defendant's article did not have a fluted or plaited border, and was held to infringe. MacdorwM v. Siden- berg et al., 4 Bann. & Ard. 586. — Blatchtokd, 1879. 289. Complainants' patent was for a machine for making gutters for buildings, and claims thereof were : "1st. The rotary cutter-stock R, with its cutters, to form the grooves of the gutter, in combination with the inclined frame S, to operate as herein described and for the purposes set forth. 2d. The combination of this part with that which moulds the bottom of the gut- ter at one operation of the ulachine." Defend- ants used a gouging cutter with an inclined frame in combination with cutters for moulding the bottom of the gutter at one operation of the machine ; they brought their cutter into connec- tion with the stock by screws and not by a lever, and could not operate the cutter without stop- ping the feed of their machine. Complainants' lever had the power of bringing the gouging cutter in contact with the stock and taking it away again instantly. Gutters with both ends stopped had been used on a prior machine. De- fendants were held not to infringe. Buffam et al. V. Oakland M'fg Co., 4 Bann. & Ard. 599. —Lowell, 1879. 290. Complainant's patent in suit was for a composition for soap, consisting of ingredients in proportion as follows : "To one thousand pounds of tallow and caustic soda sulflcient to saponify the tallow, add two hundred pounds of resin and lye sufficient to saponify the resin and water, enough to make the mass weigh about seven thousand pounds ; then add from three and a half to four pounds of pulverized quartz to one part of the above mixture." And a claim was : " A soap composed of the ingredi- ents and in about the proportions given. ' ' De- fendants used a greater proportion of resin, and also added sal-soda and borax. Defendants were held to infringe. Eastman v. Hinckle et al. , 5 Bann. & Ard. 1.— Butler, 1879. 291. Complainants' patented improvement was for pitching the interior of casks, and a claim thereof was : " The application of heated air, under blast, to the interior of casks, by means substantially as described, and for the purposes set forth." Each of the parts of complainants' mechanism, when taken separately, was old. The court held that " it is the combination of these parts in a mechanism by which the dis- CONSTEUCTION OF PATENT— SPECIFIC CASES. 149 tinctive character of hot-blast, capable of suc- cessful use in heating barrels for pitching pur- poses is .produced, which constitutes the inven- tion ; and the claim must ... be regarded as a claim to the particular means and mode of op- eration described in the specifications." Gott- fried et al. V. Phillip Best Brewing Co. , 5 Bann. & Ard. 4.-DTEK, 1879. 292. Complainant's patent was for an improve- ment in glove fasteners, consisting in the com- bination of a spring inserted in the material of the glove and extending around the edges of the slit, which permitted drawing the wrist of the glove over the hand and closing automatically, and overlapping itself. Defendants made and sold for use springs for gloves to be inserted into the material, with arms extending along each edge of the slit and joined at the apex and work- ing together like the blade and handle of a jack- knife. Springs had been previously combined with the wrists of gloves, but in a different form. Defendants were held not to infringe. Field v. De Comean et al., 5 Bann. & Ard. 40. — Wheeleb, 1879. 393. Complainants' patent in suit was for an improvement in bit braces, and a claim thereof was : " The combination of the socket F, hav- ing cams bb, and a nut B, jsrovided with dogs C C, substantially, etc." Defendant had or- ganized on the inside of the nut or sleeve a pair of grasping jaws, which worked like those of complainant, and was held to infringe. Miller's Falls Co. V. Backus, 5 Bann. & Ard. 53. — Lowell, 1879. 294. Complainant's patent in suit was for an improvement in spring bed bottoms. The speci- fication describes the improved compound bar as being composed •of two or more thin bars of wood laid one upon another and having their bolt holes sufficiently larger in diameter than the bolts which passed through them to allow each bar to spring independently of its fellow. De- fendants used a double bar, with each two bars riveted together tightly, so that one bar could not move upon the other. Defendants were held to infringe. Ladd v. Tucker M'fg Co., 4 Bann. & Ard. 344.— Lowell, 1879. 295. The claim of the complainant's patent in suit was : " A postage or revenue stamp having a portion of its surface composed of thin or fragile paper, or other suitable material, loosely attached, and on which a portion of the design or other matter is printed, substantially as and for the purpose or purposes set forth." Defend- ants' stamp was composed of a piece of paper of one thickness, bearing the printed matter ; a slip of red blank paper was attached to the out- side edges of the back of the body of the stamp, which slip was about one third of the length of the body of the- stamp and was of the same width : when the stamp was used it was tacked to a barrel head, varnished, cancelled, by a sten- cil, and sometimes a portion of the red slip which was not attached to the barrel and some of that portion which was attathed to the barrel, in con- sequence of the intervention of the slip, was cut out and preserved, the blank slip adhering to the pasted surface of the barrel. Defendants were held to infringe. Fletcher v. Belden, 16 Blatch. 468.— Shipman, 1879. 296. A claim of complainant's patent in suit was : " An elastic packing composed of at least four tenths of finely pulverized refractory, earthy, or stony material, intimately mingled with and held together by rubber prepared for vulcanizing, and then vulcanized, as and for the purpose described." Defendant's packing was composed of Para rubber, 10 pounds ; gutta- percha, 5 pounds ; sulphur, 4^ pounds ; bone black, 22 J pounds— or Para rubber, 14 pounds ; gutta-percha, 7 pounds ; sulphur, 6 pounds ; bone black, 28 pounds. The language of the specifi- cation of complainant's patent apparently ex- cluded from its scope a combination where the proportion of sulphur used was such that the product was vulcanite. Defendant's packing invariably contained vulcanite, and was held not to infringe. Clarke v. Johnson, 16 Blatch. 495. — Benedict, 1879. 297. The court construed the expressions " in- soluble india-rubber" and " gutta-percha" to mean one and the same thing. Colgate v. Gold & Stock Tel. Co., 16 Blatch. 503.— Blatch. 1879. 298. A claim of complainant's patent in suit was : " The bottle-stopper described and shown , the same consisting of the cap A, the elastic water-proof filling a, and the swinging spring frame B, the whole being constructed, arranged, and combined together so as to operate, when applied to the mouth and neck of a bottle, substantially as described, for the purposes specified." Defendant's device consisted of an elastic disk-stopper provided with a stem insert- ed in the flange thimble ; the opening and clos- ing mechanism consisted of a V-shaped yoke made of a stiff piece of wire, the central portion of which passed loosely through the stem of the stopper ; the ends of this yoke were bent in- wardly and pivotally connected with the lever, which lever was V-shaped, made of stiff wire bent around the neck of the bottle, and had each of its legs coiled for the purpose of forming two eyes for the reception of the inwardly bent ends 150 CONSTRUCTION OF PATENT— SPECIFIC CASES. of the yoke. Defendant was held not to in- fringe. Hicks V. Moller, 4 Bann. & Ard. 434. — Shipman, 1879. 299. A patent for a concrete pavement laid in detached flocks or sections is not to be construed as covering the case where blocks of cement are made in one place and carried to another place and there laid. SchilUnger v. Ountlier, 17 Blatch, 66.— Blatchford, 1879. 300. A claim in complainant's patent in suit was for " a non-conductor of heat used as a packing between the stove and the oil-holder, ar- ranged substantially as described and set forth." The specification contemplated only a solid non- conductor ; defendants used water, and were held not to infringe. Cause et al. v. Johnson etal., 4 Bann. & Ard. 501.— McKennan, 1879. ' 301. Complainant's patent in suit was for an improvement in lanterns, and the leading feature of this patent was " tlfe construction of a loose- globe lantern, so arranged that the globe can be readily removed and replaced, and at the same time have the metallic parts of the frame permanently attached together so as to make a basket in which the globe will be held or re- tained, even if the catch holding the top or dome to the frame of the lantern is unfastened." Loose-globe lanterns were old in the prior art ; so was the idea of so constructing the lantern that the globe was held in place simply by the guard. Thereupon complainant's patent was construed strictly, and defendant held not to infringe Adams v. Illinois M'fg Co., 4 Bann, & Ard. 543 — Blodqett, 1879. j 802. The claim of complainants' patent for bell-punch was : " The combination of the ratchet wheel /, and pawls', and lever h, either with or without the bell attachment, arranged and operating substantially as and for the pur- poses described." Defendant used a ratchet- wheel, pawl, and lever, but the arrangement was so different, especially in the mode of operating the lever, that, in view of the state of the art, de- fendant was held not to infringe. Railway Register M'fg Co. v. Highland St. R. R. Co. et al., 4 Bann. & Ard. 116.— Lowell, 1879. 303. A claim of complaipants' patent in suit was : "In a passenger fare-register and alarm, the combination of the operating lever H, double pawl I, registering disks P F, striking hammer K, and alarm bell E, substantially as herein de- scribed." In the machine of this patent the lever operating through the pawl turned the registering disk, and the disk, by means of a pin, engaged with the bell hammer, which sounded the alarm. Defendant changed the register and the alarm so that they operated independently of each other. Defendant was held not to in- fringe. — Tb. 304. A claim of complainants' patent in suit was : " The combination, with alarm and regis- tering mechanism, simultaneously operated for registering the number of times the alarm has been sounded, of one or more ratchet-teeth or bearing places adapted in shape to receive a de- tent, and such detent serving to prevent the sounding of the alarm until the detent has been tripped or withdrawn by a tripping piece or cam, operating coincidently with the actuating registering mechanism, for the purpose set forth." Another claim was: "In an alarm register, the combination of the actuating mech- anism with a tripping piece or cam, serving to withdraw or disengage a detent adapted to con- trol the operation of the alarm mechanism, for the purpose set forth." Defendant's device operated with a tripping piece to withdraw a de- tent which controlled the operation of the alarm mechanism in a direct manner ; it did not work in exact coincidence with the registering mech- anism, and it did not, therefore, necessarily sound the alarm whenever registration took place ; but the organization was such that the alarm could never be sounded unless registration had taken place. Defendant was held to in fringe — lb 305. Complainant's patent in suit was for a tub for distilling essential oils, and the claim thereof was : ' ' The cover when provided with a rubber ring, substantially as described ' ' De fendants inserted a rim within the tub a short distance below the top of the staves, and upon this placed the rubber packing. Defendants were held not to infringe. Van Marter v. Mil- ler et al, 15 Blatch 562.— Wallace, 1879. 306. Complainants' patent was for a machine for winding thread on spools, and a claim there of was : ' ' Adjustable lips, substantially such cis set forth, in combination with a traverse charger, whereby spools of different lengtlis may be wound by the use of the same traverse charger. ' ' Complainants' traverse chargers revolved, while defendants' slid. The one was in the form of a wheel and the other a plate shaped like a trian- gular wedge, with its point cut off parallel to its base ; the gradually increasing length of the teeth of the periphery of the wheel determined the length of the traverse in the plaintiEf's ma- chine, and the same was determined in the de- fendants' machine by projecting forward the plate for each successive course of thread, so that the longer sections of the shaper should be suc- cessively traversed. Defendants were held to infringe. WilUmantic Linen Co. et al. v. Clark CONSTEUCTION OP PATENT— SPECIFIC CASES. 151 Thread Co. et al, 4 Bann. & Ard. 133.— Nixon, 1879. 307. Complainants' patent in suit was for plating with nickel. The patent pointed out the fact that tlie solution must he so used as to be free from the presence of potash or soda. De- fendants introduced into their solution sulphate of potash and chloride of soda. The tourt found that the salts of soda potash and soda are not potash and soda, and that defendants infringed. United Nickel Co. v. Manhattan Brass Co. et al., 16 Blatch. 68.— Blatchford, 1879. 308. A claim of complainant's reissued patent in suit was . " A circular saw constructed with cuts, slots, or openings in its inner or central portion to prevent the warping or buckling of the saw when any part of it is expanded by heat. ' ' It was apparent from the original patent that the main thought of the inventor was the use of the slots extending from the eye into the plate of the saw and short of the periphery ; slots in circular saws were part of the prior art. Defendants' slots were not from the eye outward, but had solid surfaces on all sides of such slots. Defend- ants were held not to infringe. Curtis et al. v. Branch et al., 4 Bann. & Ard. 189. — Treat, 1879. 309. Complainants' patent in suit was for a preparation of artificial alizarine based upon the action of caustic alkalies upon bibrom-an- thrakinon or bichlor-anthrakinon. Defendants reached a similar result by substituting sul- phuric acid for bromide or chlorine in the above process, and they were held to infringe. Bad isclie Anilin & Soda Fdbrik v. Cochrane et al. , 16 Blatch. 155.— Wheeler, 1879. 310 Complainant's patent in suit was for an improvement in machines for making heel stifE- eners in counters for boots and shoes ; the pat ent described the use of two rollers for this pur- pose. Defendant used a spheroidal roller in com- bination with a stationary mould, and as com- plainant's patented invention was not completely new, defendants were held not to infringe. Moffit V. Bogers et al., 4 Bann. & Ard. 325. — LowEM., 1879. 311. A claim of complainants' patent in suit was : " The combination of nitro-glycerine with infusorial earth or other equivalent absorbent substance as a new explosive compound." De- fendants' powder contained "in one hundred parts, by weight, the following ingredients in- the following quantities : nitro-glycerine, 37.71 parts ; nitrate of potash, 53.68 parts ; sulphur, 5.84 parts ; woody fibre, charcoal, and re. in, in nearly equal proportions, 6.77 parts. " Defend- ants were held to infringe. Atlantic Oiant Powder Co. v. Band et at., 16 Blatch. 250.— Blatchford, 1879. 312. A claim of complainants' patent in suit was : " The combination of nitro-glycerine with infusorial earth or other equivalent absorbent substance as a new explosive compound." A powder made by defendants was composed of 56 parts nitrate of soda, 14 parts of charcoal, and 30 parts of nitro-glycerine. Defendants were held to infringe. Atlantic Oiant Powder Co. V. Parker et al., 16 Blatch. 281.— Blatchford, 1879, 313. Complainant's patent in suit was for an improvement in padlocks, and the claim thereof was : '• I claim in combination the grooves g, in the dogs a, and the flanges or pins on the pro- jecting parts of the heel of the shackle, substan- tially as and for the purpose described." The patented invention consisted in the manner of constructing the flanges or pins upon each pro- jection which answered the purpose of a stump, and in the manner in which it engaged with the tumblers. The invention was one of narrow limit. Defendants' lock had a long, grooved, L-shaped arm extending from the heel of the shackle upon its pivot, and the key was inserted in a keyhole which opened in the bottom of the case and was brought to bear upon a set of slotted, loosely pivoted tumblers resting upon each other, raising them until their slots came in a line with each other, and directly opposite the end of the arm of the shackle which had rested against the shoulders of the tumblers, and it was then caused to enter the slot. Defendants were held not to infringe. Miller v. Smith et al., 4 Bann. & Ard. 314.— Shipman, 1879. 314. By the court : " A chair is produced . . . which contains the combination of the second claim, unless that claim should be con- strued as confined to a chair not having an ar- rangement not described in the claim itself — that is. to such chairs, and not only such, as are the subject of the first claim. I see no ground for thus limiting the second claim, which would seem to have been made broad on purpose to include a class or classes of chairs not included in the first claim. '.' Stewart v. Mahoney, 5 Fed. Rep. 303.— Lowell, 1879. 315. Complainant's patent was for a copper- cable lightning-rod, and the thing which the specification treated as essential was the manner of laying the cable. The claim was the " cop- per-cable lightning rod or conductor, when con- structed as herein described and shown." The patentee contended that his invention was a coreless cable. Defendant had a coreless cable, but did not employ the complainant's method of 153 CONSTEUCTION OF PATENT-SPECIFIC CASES. laying the cable, and was held not to infringe. I particular thing. It is a mechanical device Fricke v. Hum, 22 Ped. Rep. 302.— Achbson, ■ wrought out hy combinations, which combina- 1377 I tions are not in defendants' machine." Kirby 316. Complainants' invention was a whip-tip i ^wng' M'fg Co. v. White et al., 1 McCrary, provided with a screw socket by which it was i 155.— Treat, 1880. attachable to the whip-stock, and the claim I 319. In complainants' patented self-closing was : " As a new article of manufacture, a whip- I faucet ' ' the valve was pushed downward from tip provided with a socket so as to be attached | its seat against a spring by a steep, quick- to the whip proper, as and for tlie purposes set j threaded screw turned by hand, with a swivel to forth." Defendants' [patented] device was a whip tip having a socket provided with teeth to be pressed into the stock. The idea of making separate tips for whips was original with com- plainant, and its practical merits were great. Fishing-rods had previously been made with socketed joints ; and whips had been made in sections for transportation. Held, that if com- plainant could hold a broad claim to the inde- pendent tip tliere was no doubt of the infringe- ment, but that the patent was for little more than the application of an old article to a new but analogous use, and that it must be confined to the screw-threads, the defendants' device not tieicg an infringement. Am. Whip Co. v. Hampden Whip Co. et al., 1 Fed. Rep. 87.— Lowell, 1880. 317. A patent for a mowing-machine said of the parts in question : ' ' The shoes also carry roll- ers F in front of the finger-bar, which run upon the ground and sustain the finger-bar ;" it other- wise described the finger-bar and cutters as working between the driving-wheels ; the draw- ing showed the rollers [F] in front of the shoes, and the patent claimed " the combination of the carrying roller F with the hinged and extended shoes E, arranged and located as herein describ- ed. " Held, that this claim covered the location of the rollers in front of the finger-bar and that of the roller shoes between the driving wheels, and not the location of the rollers in front of the shoes. Tinker v. Wilher's E. M. & R M'fg Co., 1 Fed. Rep. 138.— Wheeler, 1880. 318, Complainant's claim in issue was . " The cutter and feeding device of a bung-cutting ma- chine, arranged substantially as hereinbefore de- scribed, so that each block, as it is fed into the machine, shall serve as a cutting board for the next preceding block." On motion for provis prevent turning the valve with the screw, wJiich lets the valve back when the screw is released, " In some prior .self-closing faucets " the valves were lifted from their seats by stems, having projections on the upper ends working against steep inclines as cams. " " In the faucet of de- fendants the valve was lifted against the spring by a stem, with projections near the valve -Work- ing against inclines inside the shell of the fau- cet. " Held, to be no infringement in view of the narrow construction of the claim — a combi- nation of the screw and valve — necessitated by the prior art. Zane et al. v. Soffe, 3 Fed. Rep. 329. -Wheeler, 1880. 830, Complainant patented a machine for " closing the seams of metallic cans," which, in making a can with covers or angles, had the stock notched at the corner, so that there was no excess of metal at that point to be disposed of in the operation. In the reissue he inserted a clause looking toward a method, the use of which would operate upon stock not thus notch- ed. Defendant's machine came within the terms of the claim, but, as a matter of fact, seamed the cans without notching the stock, having a recess to dispose of the excess of stock. Held, that if the claim were construed to cover defendants' machine it would be invalid, and, if limited to complainant's real invention, defendants did not infringe. Covell v. Pratt et al, 18 Blatch. 126. — Blatchford, 1880. 321 Complainant's patent was for a combina- tion of parts in a machine for applying flock to belt rubber goods. A prior patent showed a machine for the same purpose, having a corre- sponding number of parts, performing the same functions, but different in form. Held, that com- plainant could ' ' hold only the improvement in form of the different parts," and that defend- ional injunction, and apparently on inspection I ants' machine, differing in the form of the parts. of the patent only, the court said : "If the com bination for placing one block after another on the fish-mouth cutter, whether underneath or sideways, vertical or longitudinal, so as to oper- ate as a cutting- board through which that fish mouth may penetrate is an infringement of this patent, the complainant would be correct. "But iff is not so. It is a particular way of doing a was not an infringement, Williams v. Barker et al., 3 Fed, Rep. 649.— Wheeler, 1880. 332. Complainants' patented improvement upon the Arctic shoe ' ' consisted in overlapping the vamp and the quarter beneath the rubber foxing, and extending the vamp and quarter so as to form bellows like, water-excluding flaps folded on each side of the instep, and buckled CONSTEUCTION OF PATENT— SPECIFIC CASES. 153 together over the instep." A prior improve- ment in earlier shoes without buckles " consist- ed in the insertion of a gore or gusset between the vamp and quarter, which folded upon itself inside the shoe, and excluded water to a certain extent." Defendants sought to limit complain- ants' patent, in view of said prior shoe, to their exact cut of vamp and quarter and extension into a flap-tongue. The court did not so limit it, and found defendants' shoe — which had the vamp quarter and flap differently shaped — to be an infringement. Williams et til v. Candee et al., 18 Blatch. 140.— Shipmak, 1880. 323. Complainant's patent claimed : " A cof- fee or similar mill having a detachable hopper and grinding shell formed in a single piece and suspended within the box by the upper part of the hopper or a flange thereon, substantially, " etc. The top of the outer wooden box to which the hopper was attached was of wood. In defendants' mill the flange in the outside of the hopper formed the top of the box. Defend- ants insisted that said ' ' detachable and grinding shell " meant a hopper and shell detachable from the top of the box. Held not so, and defendants j adjudged infringers. Strowbridge v. Lindsay etal., 3 Fed. Rep. 692.— Acheson, 1880. 824. The patent in suit said : " If the well above should not be filled with water ... be- fore the contents of the flask are ignited. ' ' The court said : " It is obvious . . that all the pat- entee sought was a sufiicient column of water. ... It is not to be inferred from the language used that in all cases the well is to be filled to the very top." A partly filled well was held to be an infringement. Boberts et al. v. Sehrciber, 3 Fed. Rep. 855.— Strong, 1880. 335. The improvement referred to in the first claim of Pearl's reissued patent. No. 60,361, for ring spinning spindle and bobbin, is the combina- tion of [1] a spindle having a shortened tip and [3] a bobbin with a central adhesive bearing. The Sawyer spindle, having a central and also an upper bearing for the bobbins, and the bolster bearing for the spindle carried up inside the bob- bin, is not an infringement. Pearl et al. v. Ap- pleton Go. et al., 3 Fed. Rep. 153.— Lowell, 1880. 336. Complainant's patented improvement consisted in the use of layers of roofing felt , roof- ing cement, and concrete or the like ' ' in sanitary water-proof cellars, cisterns, vaults, reservoirs, and similar underground receptacles" [this from the claim]. Defendant used this construction in a cellar to keep water out. Prior to the patent- ed invention it had been used in a cistern to keep water in, Meld, that the cistern embodied the improvement, and that the patent covered such cisterns. New v. Lawrence, 8 Fed. Rep. 714.— Benedict, 1880. 337. Complainant's patent claimed "the method of utilizing the leather of old card cloth- ing by heating it with gum tragacanth and reset- ting it with teeth reversely to the original teeth, substantially as described. ' ' Complainant claim- ed that the use of the gum tragacanth was non- essential. Prior use, where the gum tragacanth was not used, and where the leather was turned over instead of around, was pi-oved. Held, to anticipate the patent. Brummitt v. Howard et al., 3 Fed. Rep. 801.— Lowell, 1880. 828. Comj- ainant's claim was : " The above- described method of supplying a city with water- that is to say, by pumping direcstly into the water mains when the apparatus for that purpose is supplied with contrivances by which the press- ure within the mains may be preserved in a de- gree uniform, sufficient so far as practical jjur- poses or increased or diminished at pleasure, substantially as and for the purpose above .shown." Held, to be a claim for the combina- tion of contrivances described in the specifica- tion. Holly V. Vergennes Macli. Co., 18 Blatch. 327.— Wheeler, 1880. 329. Complainant's two clauses of claim upon a shoe for car brakes were : " Firstly, the shoe A and sole B, both being cons{ructed and adapted to each other, substantially as described, so that the sole can have a lateral rocking move- ment on the shoe, for the purpose specified. Secondly, the combination of the shoe A, sole B, clevis D, and bolt G, the whole being construct- ed and arranged substantially as specified." Held, that the second clause was infringed by a mechanism not having the ' ' lateral rocking mo- tion" specified in the first clause, and that a court " must give effect to the whole of the de- scription contained in the specification and claims," Nat. Car Brake Shoe Co. v. L. 8. & M. S. R'y Co., 9 Bissell, 503.- Drummonb, 1880. 330. Complainant's patent claimed " as a new article of manufacture, a skirt protector for la- dies' dresses, having a fluted or plaited border bound with or. composed of enamel cloth or other water- proof material." J/eH, that "the invention includes a plain as well as a fluted border or plaited form of water-proof skirt pro- tector. " McDonald v. Shepard et al., 4 Fed. Rep, 328.— Lowell, 1880. 331 . Coal scuttles being old, complainant pat- ented an improvement thereon consisting of a bottom stamped out of one piece and extending upward outside of the body. Defendant made a scuttle in substantially the same way, except 154 CONSTEUOTION OP PATENT— SPECIFIC CASES. that the bottom extended upward inside the body. Defendants' structure held not to be an infringe- ment. Whitman v. Seaman et al., 4 Fed. Rep. 436.— Wheeler, 1880. 333. A specification described a double-acting pump, but made a combination claim, among others, applicable, in terms, to a single-acting pump. As a claim to a single-acting pump it was invalid for lack of novelty. The court said patents are to be liberally construed, and that said claim " must be read as if it said, for the combination, in a double-acting pump," etc. Adair v. Thayer, 17 Blatch. 468. — Wheblbe, 1880. 383. The use of two cylinders together to ele- vate a load being old, and the only new idea com- mon to complainants' and defendant's device being that of employing the power of either one or both cylinders — in order to economize water — and the two modes of construction and opera- tion being different, it was held that defendant did not infringe. ^Stebbins Hy. El. M^fg Co. et al. V. Stebbins, 4 Fed. Rep. 445. — Blatchfokd, 1880. 334. By the court : " The first claim is not a claim to any mechanism, but, if not a claim to a function, is a claim to a mode of operation. It amounts to a claim to inserting a stopper through the mouth of a bottle, and then pressing it up- ward till it is closed tight against a seat inside. It seems to be intended to cover every form of stopper, and any form of mouth, and any means of pressure, and any arrangement of seat ; as a claim thus broad it cannot be sustained. It must be limited to the mechanism described, having the mode of operation described. ' ' Mat- thews V. Sehoneberger et al., 18 Blatch. 857. — Blatchfokd, 1880. 335. Complainant's bottle- stopper was pressed to its place by a spring as other similar valves had been similarly held, and had an outward extension whereby to push it down to open the bottle. Held, that the claim must be limited to ; substantially such a form of stopper with sub- ' stantially such an extension, and that a spherical stopper without such spring and without such extension did not infringe. — lb. 386. The claim in suit was to "an automati- cally-feeding furnace, in which the ore is carried by the superincumbent weight to be acted on by the heat, substantially as described." The court said : " This claim cannot be sustained. There is no automatically-feeding furnace in the case. The furnace described is fed by hand. . . . The claim does not correspond with or cover the specifications, and in such cases the patentees are confined to what is expressed in the claim." Knox et al. v. Quicksilver Mining Co., 4 Fed. Rep. 809.— Field, 1880. 337. The patent in question was for fixing barbs on wire fences, to prevent lengthwise motion, by kinks or bends in the wire. Held, that this could not cover all equivalent methods, because an earlier inventor had suggested keep- ing the barbs at a suitable distance apart by means of "flanges or otherwise." Washburn & Moen M'f'g Co. et al. v. Haiali, 10 Bissell, 65.— Blodgbtt & Detjmmond, 1880. 338. Complainant's patentee was the first per- son who made a " machine containing devices which operated successfully to make the sewing of straw braid in the making of hats and like articles otherwise than by hand a practical art, ' ' and the claim of the patent was construed to cover a machine which embodied a number of changes in form and operation. Straw Sewing Mach. Co. V. Ewmes, 18 Blatch. 530. — Blatch- FORD, 1880. 339. A claim for "the combination, with a steam fire-engine, of a heating apparatus, con- structed substantially as described, for the pur- poses fully set forth," construed, in view of the prior art, to be not a claim to such parts in gen- eral, but to a combination of what was new with the patentee. Brickill et al. v. New York, 18 Blatch. 373.— Wheeler, 1880. 340. A patentee claimed a fastening plate for attaching a buckle to a strap, having a prong in the body of the plate and another at the free end thereof, ' ' both being in the same longitu- dinal line." Defendant's prongs were in the same transverse line ; a structure in the prior art had the same position of the prongs. Held, that defendant did not infringe. Holmes, Booth & Hayden v. Osborn & Chessman Co., 7 Fed. Rep. 671.— Shipman, 1880. 341. Complainant's patent for hydraulic power accumulator claimed the combination of ' ' the bairrel C, piston D, rod a, weight c, and pipes d,f," etc. A combination of those elements ex- isted prior to complainant's invention, with the weight above the piston. Complainant's weight was below the piston, and that combination he claimed was the improv-ement. The specifica- tion made no reference to any improvement re- siding in so locating the weight. Held, that the claim was too broad. Maguire v. Eam^s, 18 Blatch. 831.- Benedict, 1880. 843. A patent on a gas-stove, being for a com- bination of parts, the only new member of which was a flange, the court said : " Perhaps the combination of the flange around the top with the rest of the burner made a new burner, and a new combination in a burner, so as to be pat- CONSTEUCTION OF PATENT-SPECIFIC CASES. 155 entable ; but, if so, the patent would properly cover only the precise form of burner so made, including the flange itself, as a part of the pat- ented combination of patented burner. Hence, the patent would not be infringed but by that exact form of burner throughout, or by such a flange with some other form of burner." Tifft, V. STiarp et al, 18 Blatch. 138.— Wheeler 1880. 348. For a case where features not expressed in the terms of the claim were put there by con- struction of the court, see — . Whittlesey et al. V. Ames et al., 9 fiisseU, 235.— Blodgett, 1880. 344. Complainant had a patent for a process of producing bronze color on iron, and for the product, the process being to clean the casting from sand and scale, then coat with oil or oil- varnish and subject to high heat. In a prior suit on the merits the complainant had not claimed that his patent covered the case where the iron and oil were not both oxidized. De- fendants made articles by first oxidizing the iron, then varnishing and heating to a less de- gree than would oxidize the varnish. A pro- visional iniunction had been granted in the pres- ent suit. Motion for attachment for contempt of court in violating the injunction denied. Tucker v. Corbin et al., 5 Ted. Rep. 810. — Ship- man, 1880. 345. The claim of the patent in suit was ; " A^ a new article of manufacture, a side saddle- tree, having the side bars and seat made sepa- rate and then united, substantially as and for the purpose shown and specified." Respond- ents took tough strips of wood, steamed and bent to a proper shape, and attached to them the tree as a part thereof, forming side rails for the seat ; and were held not to infringe. Burns V. Meyer, 100 U. S. 671.— Sup. Ct. 1880. 346. The claim of the patent in suit was for "the plate of hard rubber or vulcanite or its equivalent for holding artificial teeth, or teeth and gums, substantially as described." The court said : " The invention is a product or manufac- ture made in a defined manner. It is not a product alone, separated from the process by which it is created. The process detailed in the description antecedent to the claim, and referred to thereby, is as much a part of the invention as are the materials of which the plate or product is composed. Both are necessary elements of it. Hence, to constitute an infringement of the patent, both the material of which the dental plate is made or its equivalent, and the process of constructing the plate or a process equivalent thereto, must be employed." Defendant used celluloid, and was held not to infringe. Good- year Dental Vulcanite Co. v. Davis, 102 U. S. 222.— Sup. Ct. 1880. 347. A claim of the patent in suit was : "A postage or revenue stamp having a portion of its surface composed of thin or fragile paper or other suitable material loosely attached, and on which a portion of the design or other matter is printed, substantially as and for the purposes set forth." The stamp used by respondent was composed of one continuous piece of paper of uniform thickness, upon the face of which was certain printed matter, with blanks in which were inserted, at the proper time, figures and names required by law to appear upon a revenue stamp. No separate paper was attached loosely or otherwise to the face of that stamp. Upon the back of the body of the Government stamp, attached to its outside edges, was a slip of red, blank jjapor of less width than the stamp ; when the stamp was pasted on the barrel that portion of it immediately over the red slip did not ad- here to the barrel, but was protected from paste on the barrel by the intervening red slip. Re- spondent was held not to infringe. FletcJier r. Blake, 19 O. G. 281.— Sup. Ct. 1880. 348. Complainant stated that in his improve- ment in bleaching xyloidine he used " any of the well-known means, preferring a solution of chlorine or a solution of chloride of lime or soda. " Defendant used permanganate of potash, which was a known bleaching agent. Held, to be an equivalent and an infringement.- Spill v. Celluloid M'fg Co., 18 Blatch. 190.— Blatch- PORD, 1880. 349. A patent for a packing material com- posed of forty per cent and over of refractory matter held together by a skeleton of spft rub- ber is not infringed by a packing which consists of refractory matter held together by a skeleton of vulcanite, the latter having advantages in use not found in the former. The difference in action is proof of substantial difference in the compound. Clarke v. Johnson, 18 Blatch. 450. —Benedict, 1880. 350. In complainants' original patent for a paper box it was asserted that certain flaps were not only inserted but locked, and the feature was made important. This feature was not made important in the reissue, but the court held that the disclaimer of the original patent was infer- entially in the reissue, and that defendant's flaps, not having the locking quality, were not infringe- ments of the reissue. Novelty Paper Box Co. v. Stapler, 5 Fed. Rep, 919.— Nixon, 1881. 351. By the court: "The expression, 'all kinds of smooth mouldings,' means, in respect to angular mouldings, ' all kinds of smooth righ t- 156 CONSTRUCTION OF PATENT— SPECIFIC CASES. angled mouldings ;' and the expression, ' all sorts of angles, ' means ' all the kinds of square or right-angled angles ' which can be made by the square dies, and which are shown in Figures 3 and 3." Fischer v. Hayes, 19 Blatoh. 26. — Blatchfobd, 1881. 352. The claim in suit was : " In a time lock the combination, substantially as set forth, of the time movements, and two adjustable devices, one for determining the time of locking and the other of unlocking." A prior structure con- tained " two similar adjusting devices which are operated to open and close a gas-cock much after the plan of the" patented "lock." The court said of the patent : ' ' The language is not to be extended so as to include time movements which are used for any obstructing purposes whatever, but it is to be considered as referring to the time lock of the specification only." Tale Lock M'f'g Co. et al. v. Norwich- National Bank, 19 Blatch. 123.— SniPMAN, 1881. 853. Complainant's two patents on bottle-stop- pers had claims which in terms covered defend- ants' bottle-stoppers. The prior art contained close approaches to complainant's patented structures. The court limited complainant's claims, by construction, to the 'exact devices found in the patents, and found that the defend- ants' structure departed more widely from com- , plainant's than complainant's from the prior art ; and that defendants did not infringe. MattJiews V, Ohambers et al., 6 Fed. Rep. 874. — Acheson, 1881. 354. By the court : " In this case the plaintiff first united the finger and the jack when they were placed horizontally, but the defendants had already united them for a similar use when vertical. The whole emphasis, therefore, of the plaintiff's claim is on the word ' horizontal ;' now whatever may be the advantages of this hori- zontal position in the defendants' jack and finger, and whether they took it from the plain- tiff's patent or not, they may lawfully take it, be- cause it was old al the time of the plaintiff's in- vention." Grompton v. Knowles et al., 7 Fed. Rep. 199.— Lowell, 1881. 355. Complainant contended that he ought to cover all tubes made from a strip of metal wound spirally and locked at the edges. The court said that spiral-welded tubes were old, that the folded seam in tubes with straight seams was old, and that there was no opportunity for a great original discovery. Boot et al. v. Lamb, 7 Fed, Rep. 222.— Lowell, 1881. 356. For an example of a pioneer patent con- strued to cover mechanical parts and steps differ- ent from those of the patent, see — . Mammer- schlag v. Bcamoni, 7 Fed. Rep. 584. — Blatch- FOKD, 1881. 357. For an example of a part described in the specification but not specified in the claim put into the claim by construction, see — . — ITj. 358. Three of complainant's four claims did not mention the "inclined double-end bars," which formed an element of the fourth claim. This feature held to be in each of the claims by construction. Woven Wire Mattress , Co. v. Simmons et al., 10 Bissell, 894.— Dyer, 1881. ' 859. Complainant patented an improvement in blank and dies for making carriage thill shackles, others having previously made thill shackles by somewhat different blanks and dies. The feature of the improvement consisted in forcing the metal from the central part of the body sidewise to form sharp corners when the arms were bent up. Defendant- formed the sharp corners before bending up the arms, and in bending, forced the corners further apart. Held, not to infringe. Clark v. Beecher M'f'g Co. et al., 7 Fed. Rep. 816.— Shipman, 1881. 360. A patent— for water-closet valves — prior to complainants' showed the combination of a variable chamber, poppet-valve, and escape con- duit. Defendants used the variable chamber, cup-leather valve, and the escape conduit of an earlier patent. Defendants were held to in- fringe. Blake et al. v. McNab & Harlan M'fg Co., 19 Blatch. 73. -Blatchfoed, 1881. 361. One element of a reissue combination claim was "end bars." Held, in view of the state of the art, that they must be construed to be inclined and double end bars. One element in another of the claims was "standards." Held, in view of the state of the art, that they must be construed to be longitudinally adjustable standards. Womn Wire Mattress Co. v. Wire Web Bed Co., 8 Fed. Rep. 87.— Shipman. 1881. 362. The claim in the [driven well] patent was : " The process of constructing wells by' driving or forcing an instrument into the gro\md until it is projected into the water, without re- moving the eai-th upward, as in boring." The process was construed by the court to consist in the making of a flowing well to consist of the same steps plus the addition of a pump to the top of the tube. The use of the pump was held to be a use of the process. Andrews et al. v. Cross, 19 Blatch. 294.— Blatchpokd, 1881. 363. "Bell discovered a new art— that of transmitting speech by electricity— and has a right to hold the broadest claim for it that can be permitted in any case," covering all means and methods though specifically different, whether known or unknown at the date of CONSTEUCTION OF PATENT— SPECIFIC CASES. 157 Bell's patent, which "transfer to a wire elec- trical vibrations like those which a sound has produced in the air." And the breadth of this claim is not affected by a prior apparatus [that of Reiss], which made some approach toward Bell's method, but could not transmit articulate speech. Am. Sell Telephone'Co. et al. v. Spen- cer et al, 8 Fed. Rep. 509.— Lowell, 1881. 364. Complainants claimed in a snap-hook : " The combi.^ation of the tongue g with the spiral spring [Figure 4] when the spring works on the tension principle, and rests in a recess [as r] in the rear end of the tongue, substantially, as herein described." Such a combination, broadly stated, was old, but complainants' side recess in the tongue differed from the prior re- cess in having an opening underneath, with both ends of the spring projecting through the same. Defendants had the side recess, with the opening underneath, and one end of the spring projecting through the opening. Defendants held to in- fringe. Fitch V. Bragg c6 Co., 8 Fed. Rep. 588. — Shipmast, 1881. 865. An original patent was for a " spring and friction roller for regulating sash, ' ' the roller bearing against the side of the sash to prevent rattling. The reissue introduced a claim to the exteriorly threaded cylinder which held the pulley fork. Defendants used a threaded cyl inder for holding the bolt of a sash supporter [to hold the sash suspended] which came within the terms of said claim. Held, that the purpose of the two threaded cylinders were not identical or analogous, and that there was no infringe- ment. Jiickl V. Babcock et al., 8 Fe^. Rep. 605. — Shipmajst, 1881. 366. In complainant's patent for tobacco re- sweating apparatus, the box for holding the to- bacco was described and claimed as a " tight vessel made df wood," the st«am percolating through the pores of the wood. Defendant used common tobacco cases having joints more or less open. Held, that such vessels were "tight" within the meaning of the patent. R>b- insonY. Sutter etal., lOBissell, 100. — Blodgbtt, 1881. 367. The patent in issue being for making pills, it was objected that " glycerine," one of the coating materials mentioned, would not an- swer. The fact held immaterial, and ' ' glycerine" rejected as surplusage. McKesson et al. v. Cam- rick, 19 Blatch. 158.— Blatchfoed, 1881. 868. A horizontal band of wire bird cages had been held in place by looping the vertical wires through the band and holding it there by a key. Complainant held the band in place by a bend in the vertical wire. The difference held so broadly patentable as to underlie all- forms of holding the wire in place by bending the vertical wires. Maxheimer v. Meyer et al., 30 Blatch. 17.— Whbeleb, 1881. 369. By the court : " Davis is clearly shown to have been the first person to make a succcss- Iful machine for changing the shoes of a grain - drill into substantially the two lines from sub- stantially one lino, by a shifting movement ap- plied to any of the shoes, by mechanism operat- ing on and from the rear of the machine, and worked without stopping the machine or seri- ously interfering with its operation. His in- vention and patent are entitled to a liberal con- struction." Davis et al. v. Brown et al., 19 Blatch. 263.— Blatckfoed, 1881. 870. A claim for a water-closet read : " In combination with the main bowl A, tangential receiving nozzle B, and connecting a, the spreader and showeret c, " etc. Defendant used no showeret, but was held to infringe. Stockton V. Maddock, 10 Fed. Rep. 133.— Nixon, 188J. 371. For example of limitation of a claim, in view of the prior art, and rejection of a state- ment in the specification which would give the claim a broader construction, see — . Mallory M'fg Co. V. Marks et al., 20 Blatch. 33.— Blatchfoed, 1881. 873. An original patent was for a take-up for looms, one element of the claimed combination being the ' ' lay' ' which operated the take-up. In the reissue "' operating mechanism" was sub- stituted for " lay." Defendants used the same take-up in a knitting machine, but operated by cams, using no " lay. ' ' It was held that the re- issue was valid, but that the claim must be re- stricted to looms, and that defendants did not infringe. Holmes et al. v. Plainmlle M'fg Go., 20 Blatch. 123.— Shipman, 1881. 373. A claim of complainant's patent in suit was : "1. In a lemon-squeezer, the convex per- forated bed to receive the lemon, in combination with a concave presser, substantially as speci- fied." The court held this to be a claim " for a combination, one of whose essential elements is a bed on which the lemon is to rest while sub- jected to pressure, such bed having holes pierced therein for the purpose of permitting the juice of the lemon to pass through the bed, and so into the concentrator below." In defendants' machine the bed was not perforated, but was grooved or corrugated, and was held ifot to in- fringe. OriderdonkY. Fanning et al., 19 Blatch. 363.— Bi^BDiCT, 1881. 374. The patent in suit was for a nail-driving machine, and the claims thereof were : " 1. The employment of the grooved spring-jaws H, sub- 158 CONSTEUCTION OP PATENT— SPECIFIC CASES. stantially as described, for the purpose of re- ceiving the nails and to guide them to tlieir proper places. 3. The combination with the spring -jaws H of the rising and falling plungers E, constructed and operating substantially as i and for the purpose described. 3. Arranging] the plunger E, with the disk-shaped collar i orf its equivalent, to operate in combination with the spring-jaws H, substantially as and for the purpose specified. 4. The arrangement of the circular portion «/on the cam C, to operate in combination with the gate B and treadle d, sub- stantially as and for the purpose set forth. 5. The arrangement and combination of one or more adjustable carriages P, table J, and slide L, constructed and operating in the manner and for the purpose specified. " This machine was an upright machine ; respondent's was a hori- zontal machine, and did not use the spring- jaws on the peculiar-shaped plunger of the patented machine ; and was held not to in- ' fringe. Wick v. Ortrum, 103 U. S. 461.— Sup. Ct. 1881. 375. A claim of the patent In suit was : " The manufacture of fat acids and glycerine from fatty bodies by the action of water at high tem- perature and pressure." This was held by the Supreme Court to be a claim for the pi'ocess de- scribed in the patent and not for the means used for carrying out that process, as had been pre- 1 viously held by the Supreme Court in Mitchell j V. Ti'ghmnn, 19 Wall. 337. Respondents used a I different kind of patented machine from that de- 1 scribed in the patent. They added lime ; the mixture of water and fat was heated by steam ; ! and they used a lower degree of heat than that | pointed out In the patent. They were held to in- fringe. Til'jhman v. Proctoi' et al., 103 U. S. 707.— Sup. Ct. 1881. 376. The patent in suit was for an improve ment in ovens, and a claim thereof was for " the combination of the following elements, to wit ; a furnace or fireplace [one or more], a bak ing chamber arranged above such furnace or fireplace and in direct communication therewith, and a rotating reel located within said baking chamber and provided with gravitating pans or shelves arranged or hung around the shaft of said reel from rods attached to the end plates or arms thereof, substantially as and for the purpose described. " It was held that, in view of the prior arf, the patent must receive a very limited construction. Respondents' oven differed from the patented oven in that the bottom of the bak- ing chamber was not separated by any partition from the flre chamber, and there were no flues to take the heat into the chamber. Respondents were held not to infringe. Oarneau v. Dozier et al., 103 U. S. 330.— Sup. Ct. 1881. 377. Complainants' specification for a patent for a cultivator stated inter alia that the inven- tion consisted " in applying to the shank of the tooth a curved brace bar, the upper end of which passes through a slot or mouth in the beam." Defendants used the slotted beam, the shank of the tooth, and the clamping bolt, but not the curved brace bar. Held not to infringe. JSowell etal. V. Lindsay et al., 10 Bissell, 317.— Dtbr, 1881. . 378. By the court: "So far as this case dis- closes, the positive connection between the jack and the finger was first used by defendants ; but the horizontal position of the finger was not first used by the plaintiff. The only change made by the defendants in the actual from their patented machine is in this horizontal position, and this was not the plaintiff's property. This fact for- bids the application of the formula of ■ known substitutes.'" Crompton v. Knowles et al., 7 Fed. Rep. 199.— Lowell, 1881. 879. By the co\irt : " If the correct construc- tion of complainant's patents requires that one element of their combination shall consist of a holding meclianism, in which the shoe is rigidly held by the mechanism, the defendant, by dis- pensing with this, may or may not have effected a practical improvement ; but he has done that which distinguishes his machine from the class to which the complainants refer, and has not appropriated the invention." Dodge v. Feary et al., 8 Fed. Rep. 339. —Wallace, 1881. 380. The claim in Issue being one to a rod and lever together, both being new with the patentee, defendant, who omitted the lever and used the rod, was held to infringe. Dams et al. v. Brown et al., 19 Blatch. 363— Blatchford, 1881. 381. Complainant coated cast iron with as thin a coat of oil [or oil and varnish] as was practically possible, and then subjected the arti- cle to high heat, which, acting on the oil and iron jointly, produced a handsome bronze-colored surface. A thicker coat of oil varnish baked on at a heat of 430° Fahrenheit was old. Defendants first oxidized the iron at a heat of 380° and then baked on a tolerably thick coat of copal varnish at 300°. Defendants held not to infringe. Tucker V. Sargent & Co., 19 Blatch. 538. — Shipman, 1881. 383. A patent for graduating marks extend- ing partly around the inner surface of a glass vessel is infringed by graduating marks in the shape of shoulders extending entirely around the inner surface. Hohbs et al. v. King etal., 8 Fed. Rep. 91.— Achbson, 1881. CONSTRUCTION OF PATENT— SPECIFIC CASES. 159 383. Complainant's claim -was : " An im- proved Coes wrench, so constructed that the thrust or back-strain of the rosette screw, when the wrench is used, shall be borne by the shank instead of the handle of the wrench, substan- tially as described. " Held, that, in view of the prior art, this claim must be limited to the exact device shown. Coea v. Collins Co., 20 Blatch. 221.— Bl.\tchpord, 1883. S84. For an example of a broad claim in a re- issue construed strictly in view of the state of the art, and a slightly different device held not to infringe, see — . James v. Campbell et al. , 104 U. S. 356.— StTP. Ct. 1883. 385. For example of broad claims limited by construction to the shape of lamp-shade holder shown in the drawings, and defendants' differ- ent shape held not an infringement, see — . Schneider v. Lowell et al., 30 Blatch. 311. — Blatchford, 1882. 386. The claim in suit was for " figures and fractions in printing type cast upon a block equal to two thirds the width of the body of the ' em ' or standard type." The court said : ' ' The claim is to be read in connection with the specification as if there was added to it the phrase ' as specified ' or ' as set forth. ' Read in that light, the claim is for the broader type, as well as for the body of the type." Bruce -v. Marder et al., 30 Blatch. 355.— Wheeler, 1883. 387. An original patent having described and claimed a limitation that was omitted from the reissue claim, the limitation was put into the reissue by construction. Campbell et al. v. Kavarumgh, 20 Blatch. 356.— Blatchford, 1883. 888. The first claim in a reissue was : " A knitting-burr blade A, having on its inner end a dovetail or flaring projection b and lateral shoulders c, c, substantially as herein described. " Of this the court said . " Claim 1 must be limited to a wing to be used in a hollow slotted hub. Otherwise it is not a claim to any mech- anism or to any patentable structure, but only to a piece of metal of a certain shape, incapable of use till incorporated in another structure." And defendant's wing, which came within the claim, was held not to infringe. — lb. 389. A claim was for " the detached case B, so combined and arranged with the hydrant A, as. to have an end play or vertical motion of several inches to compensate for the heaving by frost, the upper part of the same passing outside of main stock of hydrant." The court said : "Had this patent been confined to a hydrant jacket closed at the bottom and resting on a flange of the main elbow, perhaps it might have been sustainable ; but it is not so confined. It is only said that the lower end preferably shuts into a flange of the elbow. . . . The claim . . . as it stands covers any and every loose jacket having end play to compensate for the heaving of the frost, and having the upper end passing around the hydrant. It covers the old New York wooden case or housing, which was in public use for many years before Race and Mat- thews gave their attention to the subject. We are of the opinion, therefore, that this patent cannot be sustained." Matthews et al. v. Boston Mack. Co. et al., 105 U. S. 54.— Sup. Ct. 1883. 390. The patent in suit contained two claims — viz. : " [1] A can or other vessel made of sheet metal, in which the top or bottom is joined to the sides by a double-recessed clamping lap-joint, substantially as described. [3] A can or other vessel made of sheet metal, in which the top or bottom is joined to the sides by a clamping lap- joint, which is capable of being soldered by drip- ping, substantially as described." The court said : " Consti'uing the first claim, as we think it ought to be, in connection with the directions given for the construction of the can in the body of the specifications, we are of the opinion that the second claim is comprehended in the first, and is, therefore, a partial duplica- tion of it. It claims a can with a double-recessed clamping lap-joint, which is capable of being soldered by dripping. The can referred to in the first claim has its capability, because it is directed to be constructed with the joint de- scribed, which is to be soldered by dripping. Of course it is capable of being soldered, and hence the second claim embraces only a quality or feature which is covered by the first claim, as an inseparable incident to the can therein claimed as an entirety. We must, therefore, dismiss the claim from further consideration as void." Combined Patents Can Co. \. Lloyd, 11 Fed. Rep. 153 — McKennan, 1882. 391. In plaintiff's invention in pumps, the combination included a diaphragm which was shown and described as being at one side of the uptake. Defendant placed the diaphragm over the uptake, but attained the advantage which complainant attained, and the court, in view of the prior art, construed the claim broad enough to cover defendant's pump. Loud v. Stone, 11 Fed. Rep. 73l.— Lowell, 1883. 393. Complainant's patent being for "an earthenware saucepan, the bottom of which is rounded and has a regular surface of or about an equal thickness throughout," defendant's saucepan, having corrugations upon the bottom, 160 CONSTEUCTIOlSr OF PATENT— SPECIFIC CASES. was lield not to be within the claim. Scott et al. V. Evans, 11 Fed. Rep. 726.— Achbson, 1883. 393. For example of refusal to construe into a claim a part generally but not specifically mentioned in the claim, see — . Doubleday v. Beaity, 11 Fed. Rep. 729.— Achbson, 1882; 394. Complainants' patented device being for an oven shelf operated, in connection with the oven door, very much as a carriage step of the prior art operated in connection with a carriage door, it was held that the claim must be restrict- ed to complainants' exact device ; and defend- ants' device, being slightly different in detail, was held not to be an infringement. Bridge et al. V. Excelsior M'fg Co. et al., 105 U. S. 618.— Sup. Ct. 1882. 895 . For an example of reissued claims limited by construction to the terms of the claims of the original patent, see — . Consolidated Oil Well Packer Ca. v. Eaton, Cole & Burnham Co., 12 Fed. Rep. 865.— Siiipman, 1883. 396. The first claim of complainant's patent was for a tin sheet having a " bright or polished copper surface," etc. The second claim was for a process including as one step " cleaning the other surface.'' The court construed the " bright or polished copper surface" of the first claim to be a surface made bright or polished by a wheel or other approved mode of polishing ; and construed the words " cleaning or brighten- ing" of the second claim to mean such polish- ing, and held that where the sheet was cleaned by diluted acid the patent was not infringed. | Cotter V. New Haven Cojiper Co. et al., 13 Fed. I Rep. 234.— Shipmajj, 1882. i 397. By the court : " Clough was the first I person who applied a valve regulation of any \ kind to the combination to which he applied it, j and the first person who made such combination, and he is entitled, under the decisions heretofore made by this court, to hold as infringements all valve regulations applied to such combinations v.-hich perform the same oflfice in substantially the same way and were known equivalents for liis form of valve regulations. " Clough v. Oil- bert & Barker M'fg Co. et al., 106 U. S. 166. — Sdp. Ct. 1882. 398. In complainant's patented gang plough a brake, acting on the periphery of the wheel, was used to raise the plough. In defendants' gang plough a friction band encircling the Extension of the wheel hub was used for the sam.e purpose. If complainant had been the first to utilize the motion of the carrying wheel for raising the plough, the court would have found, defendant an infringer ; but he was not, and the court said : " I am therefore of the opinion that de- fendants' friction band does not infringe the friction clutch shown in the complainant's mechanism, and that the complainant, upon the state of the art, had no right to claim broadly any friction clutch whereby the crank axle should be locked to the wheel ; but is confined to the friction clutch shown in his specifications and drawings." Newton v. F. & B. M'fg Co., 11 Bissell, 405.— Blodgett, 1882. 399. Complainant's patent was for: " As a new manufacture, soap in which the described petroleum residuum is one of the ingredients. ' ' Defendants used vaseline in their soap. The prior art was such that complainant's claim was necessarily limited to his particular residuum, and defendants, using another residuum, were held not to infringe. Parsons v. Colgate et al. , 21 Blatch. 171.— Wheelbr, 1882. 400. A claim in a reissue which is in substance the claim of the old patent, with added elements in combination, is valid. Eay et al. v. Eraser, 11 Bissell, 423.— Blodgett, 1883. 401. Complainant's patent being limited to that alcohol which is spirits of wine, the use of methyl alcohol, which is wood alcohol, is not an infringement. Spill v. Celluloid M'fg Co., 10 Fed. Rep. 290.— Blatchfoed, 1883. 403. The Green driven-well patent held to cover the case where the well was bored until water was struck, and the well then finished by pressing the pipe more deeply into the source of supply. Andrews et al. v. Eames, 15 Fed. Rep. 109.— Shipman, 1883. 403. The claim in suit was to " the concave base-block, having extensions and shoulders in combination with the cylinder and its cone, sub- stantially as described." The court said: "I am satisfied that the patent must be limited to the base-block of the particular construction de- scribed. . . . His base- block is a circular disk with a depression on the upper surface for con- taining the bait, the shoulders and extensions in the Harper patent being dispensed with and metallic springs used instead, over which the case and trapping cone are slipped by which they are held in place." Nat' I Mfg Co. et al. V. Meyers, 15 Fed. Rep. 387. —Matthews, 1888. 404. Complainants' patent on post-office boxes being for "a series of metallic door frames and doors, with a series of wooden pigeon-holes, whereby a series of post-offlce boxes with a con- tinuous metallic frontage is formed," defend- ant, having been adjudged an infringer, then made its metallic boxes so that the top, bottom, and sides of each box were separated from the corresponding parts of adjacent boxes by thin strip.s of wood i out an eighth of an inch thick, CONSTRUCTION OF PATENT- SPECIFIC CASES. Kil which were not covered by metal. On a motion for attachment for contempt, defendant was held not to infringe. Tale Lock M'f'g Go. v. Samille M'f'g Co., 15 Fed. Rep. 342.— Shipman, 1883. 405. Where the claim in a patent for plating with nickel negatived the presence of acid in the solution, and defendant had a small quantity of acid in his solution, the court said : " The in- fringement of the claim cannot be avoided by introducing such small quantities of any of the injurious substances named by Adams as will produce no practical injurious effect. ' ' United Nielcel Co. v. Pendleton, 31 Blatch. 226.— Blatoitfoed, 1883. 406. The claim in issue was : " The electro- plating of metals with a coating of compact, coherent, tenacious, flexible nicliel of sufficient thickness to protect the metal upon which the deposit is made from the action of corrosive agents with which the article may be brought in contact. " The claim was sustained and held to cover the product irrespective of 'he process used. — lb. 407. Where complainants' claim was broad enough to cover a fire pot having vertical open- ings of any length, the court refused to construe the claim as limited only to that length of open- ing shown in the drawing, and held that a prior structure, having longer openings, was an antici- pation. Hailes et al. v. Albany Stove Co., 31 Blatch. 271.— Wallace, 1883. 408. By the court : " The case is one where, in view of the state of the art, in the field of wash-boards made of sheet metal with the sur- face broken up into protuberances formed of the body of the metal, so as to make a rasping surface and to strengthen the metal by its form^ and to provide channels for the water to run off, Todd was not a pioneer. He merely devised a new form to accomplish these results. . . . The defendant adopts another form. Under such circumstances the Todd patent cannot be ex- tended so as to embrace the defendant's form. The latter is not a more colorable departure from the form of Todd, but is a substantial depart- ure." Buff et al. V. Sterling Pump Co., 107 U. S. 636.-Strp. Ct. 1883. 409. Complainant's tubular bearings abutted directly against each other. Defendants' were separated by washers. These washers served a function additional to that which they served by connecting the tubular bearings. The prior art approached very close to complainant's device. Defendants were held not to infringe. Bodds v. Stoddard et al., 24 O. G. 799.— Sagb, 1883. 410. Where the specification of a patent on running gear for vehicles stated that the bottom springs should be attached to the rear axle " close to the shoulder," and it was found that the object of the invention was attained if thij point of attachment was somewhat removed from the shoulder, it was held that this latter construction was within the patent, drier v. Castle, 34 O. G. 1176.— McKenkan, 1883. 411. The claim in issue was : " A drive screw having an angular thread of the character shown and a conical point the base of which is of the same diameter as tlie lower end of the shank, with which it immediately connects. " Defend- ant's screw had a straight taper instead of a conical point. The court said : "If, as has been claimed, the original patent covered no screws but those having oval points, still, as it covered the enlarged base of the point also, it might be infringed by the use of that thing without the oval point, for the patent, gives ex- clusive enjoyment of the whole patented inven- tion, and taking one feature is an infringement pro tanto. It cannot be necessary to take the whole invention to constitute an infringement." Fetter et al. v. Sewhall, 21 Blatch. 445.— Whei;lek, 1883. 412. Complainants' patent was for an improve- ment in jewelry. Defendants' article was a button. It was held that defendants' article came within the scope of the patent. Boyce et al. V. Fifieli\- sequently — it was held— they were entitled, when applying for a patent, to make a broad claim for the product when made by their process, whether, as part of the process, the treatment of sulpho- acids with nitric acid should be according to their method or should be by any other equivalent method which would produce their product. Pickliardt et al. v. Packard, 33 Blatch. 23. — Wallace, 1884. 456. Where one element of a combination claim was a windlass, and defendants substituted therefor a lever ; and levers and windlasses were old in the prior art generally, complainant was restricted to his specific windlass, and defendants held not to infringe. McFarland v. Deere & Mansur M'fg Co. et al, 32 Fed. Rep. 781.— Blodgett, 1884. 457. Complainant's improvement in paint cans employed an annular disk with an upwardly projecting bead, presenting a rotind smooth sur- face to the brush. Defendant employed an an- nular disk with a sharp upturned edge: The court held defendant not to infringe in view of the prior art, and said : ' ' One combination is not the same as another if it substantially difEers from it in any of its parts. " Norton v. Eaight, 33 Fed. Rep. 787.— Grbsham, 1884. 458. Complainant's patent was for a truss, and his combination included a certain ratchet-tooth- ed cylinder and spring lever. Defendants used a set screw in lieu thereof, and were held not to infringe. Beclcer v. Hastings et al., 33 Fed. Rep. 837.— Butler, 1884. 459. Where, in a button sewing-machine, there were groups of instrumentalities, and defend- ant's machine differed from complainants' in the make up of the specific groups, defendant was held not to infringe. Morley Sewing-Machine Co. et al. V. Lancaster, 33 Fed. Rep. 344. — Colt, 1885. 460. Complainant's patent was for a horse- collar with detachable pads ; but, in view of the art, it was necessary to construe it to be for a collar to which, in the absence of hames, sepa- rable pads might be attached by buckles and straps, thereby obviating the use of hames ; and, as defendant did not use such a collar, it, was held not to infringe. Osmer v. J. B. Sickles Saddlery Co., 33 Fed. Rep. 734.— Treat, 1885. 461. Complainant's patented improvement in sewing-machine was : ' ' The combination, sub- stantially as herein described, with the stitch- forming mechanism, of a rotary cutter having its cutting edge or edges eccentric. " Defend- ant's machine showed certain structural differ- ences in the form and the size of the cutter, and 166 CONSTRUCTIOK OF PATENT— SPECIFIC CASES. the parts were so arranged as to do but a frac- tional part of the cutting while the fabric was in motion. These changes by defendant were held not important because the defendant had only waived an immaterial part of the benefit de- rived from the invention. Sewing-Machine Go. y. Vrame, 24 Fed. Rep. 596.— Butlbb, 1884. 462. The claim in complainant's patent for an improvement in boots was : " k. counter pro- tector, as hereinbefore described, extending from a point in front of One eye-seam over the seam to a point in front of the opposite eye-seam, substantially as described." The protector was described as being inside the boot. The prior art closely approached the patented thing. De- fendants' outside protector was held not to be an infringement. Buckingham v. Porter et al. , 26 Fed. Rep. 759.— Sawyer, 1884. 463. Plaintiff's patent was for an improve- ment in constructing bridges, and a claim there- of was : "What I claim as my invention and desire to secure by letters-patent is : The ground frame constructed of rods F [longitudinal iron rods] and the girders a [transverse iron bars], in combination with the rod c [vertical iron rods], connected and arranged substantially as herein set forth." Defendant used longitudinal rods and transverse bars without chaining together, and vertical rods were not used. Defendant was held not to infringe. Pacific Sub. & E. P. W. Go. V. United States, 19 Nott. & Hunt. C. C. 234.— ScopiELD, 1884. 464. The patentable novelty of the described alloy consisting in the proportion in which the copper and tin were compounded and in the addition thereto, in the process of melting, of the prescribed quantity of arsenic ; and de- fendant's metal being shown to be composed of copper, tin, zinc, lead, and arsenic — copper within the range of proportion stated in the pat- ent, and the tin and arsenic generally below the minimum proportion stated in the patent, de- fendant was held not to infringe. Kirk et al. v. ElkinsM'fa & Gas Co., 19 Fed. Rep. 417.- McKennan, 1884. 465. Complainants' patent was for cementing a sheet of celluloid to the key-board of a musical instrument, and the slitting of it in ac;3ordance with the divisions between the keys. Defendants took a sheet of celluloid, cemented two strips of cloth to the back, slitted the sheet for key-faces, and then applied them to the keys. Defendants were held not to infringe. Gelluloid M'fg Go. et al. V. Cbrostoc/c ei aZ., 23 Fed. Rep. 38. — Ship- man, 1885. 466. Complainant's patented invention, as claimed, was for "a screen or riddle immersed i in a vessel of water," etc. Defendants used the screen or riddle in open water, and were held not to infringe. Williams v. Stolzenback et al., 23 Fed. Rep, 39.— Acheson, 1885. 467. The claim of a patent, properly con- strued, was for a process of saturating leather, etc., with glycerine until it became impervious to gas. Defendants immersed their fabric in a compound of glue, glycerine, soap, borax, and sulphate of iron ; the glue rendered the fabric gas-proof, and the glycerine made it flexible ; the other Ingredients cured the glue and glyce- rine. Defendants were held not to infringe. Farmers' PiHend M'fg Go. v. Cliallenge Gorn Planter Co. et al., 23 Fed. Rep. 42.— Baxter, 1885. 468. In a flanging machine the lower roll was extended beyond the outer end of the upper roll a distance equal or nearly equal to the thickness of the plate to be flanged. This was a perma- nent arrangement. Defendants provided their upper roll with a spiral spring which permitted it to recede, in operation, so as to produce the same effect ; and were held to infringe. Phillips et al. V. Carroll et al., 23 Fed. Rep. 249.— AcHESON", 1885. 469. Complainants' invention was of a culti- vator tooth having a certain kind of brace. lu view of the fact that such braces generally were old, the claim was held to be limited to the speci- fic kind of brace, and a tooth with another kind of brace was held not to infringe. Howell et al. V. Lindsay et al., 113 U. S. 97.— Sup. Ct. 1885. 470. A claim in complainant's patent was : " The neck pad, having an inner lining of crimped leather, and provided with straps to al- low its being fastened to the collar, as herein shown and described, for the purpose specified." The patent described a stuffed pad, and the court held that the claim was to be construed as for a combination consisting of a stuffed pad having an inner lining of crimped leather and straps to fasten the pad to the collar ; and the defendant, who used a single piece of crimped leather, having a piece of sheet metal, so shaped as to fit it, riveted to its upper side in order to stiffen it and preserve its crimped form, and provided with straps to fasten to the collar, was held not to infringe. Yoss v. Fisher, 113 U. S. 213.— Sup. Ct. 1885. 471. For an example of a claim construed, in view of the prior art, so narrowly as not to in- clude the use of mechanical equivalents by de- fendant, see — . Grain Drill M'fg Co. v. Rude etal., 30 O. G. 1207.— "Woods, 1885. 472. The claim in issue was : " I claim, in a valve for water-closets, a cup-leather for con- CONSTRUCTION" OF PATENT— SPECIFIC CASES. 167 trolling the motion of said valve, in closing grad- ually, substantially as specified, said cup-leather moving freely in one direction and closing against the containing cylinder in the other di- rection, and the leakage of water in said cylinder allowing the movement of said cup-leather, as set forth." The court found that the general construction was that of a prior patentee, using a cup-leather centrally instead of the central valve of said prior patent. A central valve was old ; a cup-leather was old ; a plunger with a central valve and means of regulating the escape of water from above it was old ; and, in view of this prior art, complainants were restricted to his specific device. Thompson et al. v. Boisse- lieretal., 114 U. S. 1.— Sup. Ct. 1885. 473. Complainants' claim was ;" I claim the use of a drip-box or leak-chamber arranged above the closet and below and around the sup- ply-cock, substantially as described." The fol- lowing devices were old : a drip-cup or drip- box ; a pipe to convey away drippings in ma- chinery from a drip-box arranged in connection with a cock ; a drip-cup applied to the valve of a water-closet, the leakage ^rom the valve fall- ing into a saucer, and thence finding its way through a hole into the inside of. the trunk ; a valve on the floor at the foot of the trunk ; a valve attached to the trunk and below its top ; a valve above its top ; a valve with a drip-pan conducting the drip into the soil j)an pipe at the foot of the trunk ; a valve on top of the trunk, and a provision, by means of a hollow arm, to conduct the drip into the trunk. In view of this .state of the art, the claim was limited, by its language, to a drip- box " arranged upon the top of or over the trunk ;" and as defendants' drip- box was on the side of the trunk, they were held not to infringe. — lb. 474. The patented improvement was of a valve for water cylinders of steam fire-engines and other pump cylinders. The improvement was really an automatic valve in combination with a contrivance consisting of a pinhole and pin, by which the valve might be raised from its seat so as to leave the valve hole permanently open, or by which the valve might be rigidly closed upon its seat, making a closed or float valve. This inventor was not the first to conceive the idea of a device for opening or closing rigidly an auto- matic valve. The same thing had been done by means of weights and screws in other devices. The claim was, therefore, construed to be confined to the specific device described in the specifica- tion and claims — namely, a pinhole and pin. As defendants used for this purpose a screw, sleeve, or cup, they were held not to have one of the elements of the combination, and there- fore not to Infringe. Blake v. San Francisco et al., 113 U. 8. 679.— Sup. Ct. 1885. 475. Complainant's claim, referring to an in- vention in hammocks, was for a combination of, first, a rectangular, flexible, open-work fabric ; second, a continuous, flexible binding ; third, certain strengthening cords ; fourth, certain eye- lets ; fifth, a continuous clew lining ; sixth, suspending rings. There were certain elements of this combination not present in defendant's device. Complainant claimed, however, that there were in defendant's device mechanical equivalents for the omitted elements ; but as com- plainant's device had the same features which were thus claimed to be mechanical equivalents in addition to the said omitted elements, it was found that defendant's structure did not have said mechanical equivalents. Travers v. Pal- mer, 31 O. G. 383.— CoxE, 1885. 476. Complainant's patent was for an im- provement in circuits for electric railroad sig- nals. The court found that one essential of the combination claimed in the patent was insulat- ed sections of the railroad track used, when covered by the locomotive or cars, as a circuit closer. Defendant's device dispensed with such insulated section of the track, and employed in place thereof a separate instrument placed near the track and worked by means of a lever con- nected with the track, so that the wheels of the locomotives and cars, passing on the track, de- pressed the outer end, the lever being I'aised again and held up after the train had passed by means of a spring which held it in place. De- fendant was held not to infringe. Ulectric Sig-- nal Co. V. Hall Railway Signal Co., 114 U. S. 87. —Sup. Ct. 1885. 477. In complainant's patent for an electric railroad signal, the entire circuit, operated by a single battery and closed intermediate points, for the purpose of displaying and concealing the signals, was described as formed by means of two wires or other conductors attached to the positive and negative poles of the battery, and extended to any required distance parallel or nearly so to the line of railroad ; these two con- ductors were designated as metallic and insulat- ed from the earth, and were embraced under that description in the claims. Defendant's plan did not include a metallic circuit composed of two conductors, such as those described, but used a circuit composed in part of the earth it- self. This arrangement was held to be a new combination, giving a new result, and held not to infringe. — lb. 478. Complainant's claim, in its patent for 168 CONSTRUCTION OP PATENT— SPECIFIC CASES. improvement in fabric for collars and cuffs, was : " A fabric for collars and cuffs or other similar articles, having outer sheets or layers of cellu- loid and an outer lining of textile or fibrous ma- terial, substantially as set forth and for the pur- poses specified. ' ' Defendant cut a single sheet of chrolithion, essentially the same as celluluid, into the desired shape, but larger than the finish- ed article ; it placed a narrow strip of textile or fibrous material around the four edges, which were then folded over and by heat and pressure made to adhere. The buttonholes were strength- ened in substantially the same manner. De- fendant was held to infringe. Celluloid M 'fs Co. V. C JiroUfliion Collar and Cuff M'f'g Co., 31 O. G. 519.— CoxE, 1885. 479. Jfi a patent for a telegraph printing instru- ment, there were two printing wheels specified in the claim as arranged to print jointly ; defend- ants contended that this meant simultaneously ; but the court held that the prior art called for no such construction, that the patent did not describe the two wheels as necessarily acting simultaneously, and that the real improvement did not consist in making the two wheels act simultaneously, and therefore held that in this case jointly did not mean simultaneously. Oold •& Stock Tel. Co. v. Commercial Tel. Co. et al., 23 Blatch. 199.— Shipman, 1885. 480. Complainant's patented telegraphic print- ing instrument had two type-wheels capable of independent rotation. In defendants' machine, which had two type- wheels, each one came back to the zero-point after acting, which was a feature not found in complainant's device. De- fendants were held to infringe. — lb. 481. Where a claim in a process patent was : " The method of insulating telegraph wire by first filling the pores of the covering and subse- quently compressing this covering, and thereby polishing its surface, substantially as described, ' ' complainant contended that a feature of the patented process was the allowing of the wax or paraflane to cool before compressing it. There- upon the court said : ' ' Clearly a patentee can- not claim the benefit of an element of his inyen- tion thus vaguely and indefinitely hinted at. " " That part of the alleged invention is not even referred to in the most distant manner in the claim." Western ElectricM'fg Co. v. Ansonia Brass & Copper Co., 114 U. 8. 447.— Sup. Ct. 1885. 482. Complainant's patent was for an adjust- able desk top held in place by a hooked rod. Defendant used a stop-hinge for that purpose. The prior art approached closely to the patented device Defendant's stop-hinge was held not to I be an equivalent for the hooked rod, and the court said : " To be an equivalent it must per- I form the same function in substantially the same ! manner." Peard v. Johnson, 23 Fed. Bep. 507. i — CoxB, 1885. 1 483. In complainant's patented bed frame the adjustable standard at the corner needed . to be adjusted by some power extriasic of the frame. In defendant's frame the adjustment was effect- ed by a screw belonging in the structure. De- fendant held to infringe. Hartford Woven Wire Matt. Co. V. Peerless Wire Matt. Co., 23 Blatch. 227.— Shipman, 1885. 484. Complainant's improvement in hoisting apparatus was a combination of a drum, a shaft, a friction-cone, a spur-wheel, a spring, and a side flange. The differences therefrom in defend- ants' device were that while the friction-surface of complainant's device was wood, that of de- fendant was leather. Where the complainant had one spring to regulate the pressure, defend- ants had two. Where, in complainant's machine, the bearing of the friction-surface was between the inner face of the drum-flange and the outer face of the friction-cone, in defendants' device it was between the outer face of the drum- flange and the inner face of the friction-cone. These changes were held to be merely mechani- cal, or the substitution of well-known equiva^ lents. Mundy v. Kendall et al., 23 Fed. Rep. 591.— Nixon, 1885. 485. Complainants' patent was for an improve- ment in making carriage-thill shackles, and con- sisted in disposing the body of the blank out of a straight line so as to give a surplus of metal for the final formation of the back. A prior patentee obtained this surplus by certain down- ward projections. Another prior patentee ob- tained it by " sharp lower corners with curved arms." Complainants were restricted, by con- struction, to his exact shape ; and defendant was held not to infringe. Clark et al. v. Beeclier M'fg Co., 115 U. S. 79. -Sup. Ct. 1885. 486. Where, in a patent for a transom lifter, approached by the prior art, the main object of the improvement set out in the patent was to prevent the operating rod from being bent or displaced by the weight of the transom, de- fendant's device, which might have been con- strued within complainant's patent, upon a broad construction, did not embody the said improve- ment, and was held not to infringe. Wollensak V, Beiher, 115 U. S. 87.— Sup. Ct. 1885. 487. Complainant, in his patented baggage- check, used one piece of metal ; defendant used two ; complainant had a face-plate with three distinct openings ; defendant had but one open- CONSTRUCTION OF PATENT— SPECIFIC CASES. 169 ing of the same size in both plates ; complainant had a back plate with openings of any kind and a lip to guide the card ; defendant used neither of these features ; complainant attached his strap so that both sides of the holder were exposed ; defendant was particular to obscure one side with the strap ; defendant's holder was reversi- ble ; complainant's was not. The point of similarity between the two was that both adopt- ed flanges to prevent lateral sliding of the plates and to give strength and durability to the check. The claim was for a combination of the features of complainant's check. Defendant used only one element of complainant's check, and was held not to infringe. Ahott v. Hoole M'fg & Baggage Cluck Co., 31 O. G. 1561.— Coxe, 1885. 488. Complainant's claim was : ' ' The revolv- ing cutting block P, in combination with the cutting press, substantially as and for the pur- pose specified." Defendants used a revolving block and cutting die, but not the cutting press. In view of the prior state of the art, the defend- ants were held not to infringe. Richardson v. Bremalmnetal., 23 Fed. Rep. 897.— Colt, 1885. 489. In complainants' machine for packing shoe-shanks, the blanks wer6 not cut before use, while they were so cut in defendant's machine. In complainants' machine the blanks fell to the table by gravity, while in defendant's machine there was a device for pushing the shank from the dies. Defendant was held to infringe. Jenkins et al.v. Oumey, 2S Fed. Rep. 898. — Colt, 1885. 490. Complainant's improvement, as claimed, was : "In an air cooler or an apparatus for cool- ing carcasses, etc. , the combination of the fan- blowers or fanners F, the system of tubes T 1 1, etc. , and the ice chest or depository in either of said forms, as and for the purposes shown and represented." Defendant did not use an ice chest, but in lieu thereof used an apparatus for chUling composed of compression cylinders. Defendant was held not to infringe. Bate Re- frigerating Co. V. Eastman, 33 O. G. 517. — Shipman, 1885. 491. Complainant's patented machine was for unhalring and scouring hides or skins. The bed of the table was omitted from the claimed com- bination. Defendants contended that such bed formed an actual part of the combination, and because not mentioned m the claimed combina- tion, the claim therefore covered a mere aggrega- tion. Defendants' contention was overruled. McDonald y. Whitney et al., 24 Fed. Rep. 600. —Colt, 1885. 493. Defendants' machine had one less roll than complainant's patented machine, but that one roll filled the important patented function, and defendants were held to infringe. — lb. 493. For an example of changes in the struc- ture of a windmill held to be merely mechanical, see — . Eclipse Windmill Co. v. Woodmaiue Windmill Co. et al., 34 Fed. Rep. 650.— Blod- QETT, 1885. 494. In complainant's patented baby-jumper, the principal feature of novelty was a back- wardly curved suspension rod. Defendants used a bifurcated or double rod having substantially the same curve, and were held to infringe. Spooner v. Born et al., 34 Fed. Rep. 700. — Blodgett, 1885. 495. In a patented automatic fire extinguisher, the gist of the improvement consisted in locating the seal on the outer end of the water conduit. This, resulting in practical advantages, was held sufficient exhibition of invention to support a patent. Defendant, in making this seal, used a semispherical cap in place of the patented flat cap, and its flanges passed into the pipe instead of outside thereof ; defendant was held to in- fringe. Parmelee et al. v. A. Burritt Hardware Co., 34 Fed. Rep. 735.— Shipman, 1885. 496. For an example of a narrow construction of a patent, in view of the state of the art, and a finding thereupon that defendants did not ip- fringe, see — . Leach v. Chandler et al., 24 Fed. Rep. 791.— Nixon, 1885. 497. For an example of an arrangement of leaves in a pocket check book held patentable over former arrangements, and of a variation by defendant held to be an infringement, see — . Norrington v. Merchants' Nat'l Bank, 25 Fed. Rep. 199.— Colt, 1885. 498. The claim of complainant's patent was : " The herein described trunk -roller, the frame of which is formed from a square sheet metal blank, cut or incised at the junction of the plate A, and ears B, B, said ears being bent up from two opposite corners so as to leave the points c, c, c, c, substantially as described." It was held that complainant's patent could only be sustained by limiting it to roller frames having diagonal incisions in the plate, and the opposite corners of the blank turned up. Defendants' trunk-roller was produced from blanks in which the Incisions were not diagonal nor the opposite corners turned up, but by using a rectangular rather than a square blank, and making the in- cisions in lines parallel with the longer sides of the rectangle. Held not to infringe. Ses- sions v. Gould et al., 38 O. G. 1139.— Nixon, 1885. '499. Complainant's patent being for roller frames or castors for trunks, devices which were 170 CONSTRUCTION OP PATENT— SPECIFIC CASES. not used for trunks were held to be a part of the prior art. — lb. 500. A patented hat-pouncing machine showed a frustro-conical pouncing cylinder. The claim mentioned it as a " pouncing cylin- der." Defendants used a cylindrical pouncing wheel, and were held to infringe. Nat'l Hat- Pouncing Machine Co. v. Thorn et al. , 25 Fed. Rep. 496.— Colt, 1885. 501. The claim in a patent for a lubricator was : " The drip-tube P, constructed and ar- ranged to operate substantially as described, whereby the water from the condenser shall be delivered against or close to the side of the glass in order that it may be seen as it enters the oil, or passes through the same. ' ' The court said : " The claim must be limited to a drip-tube with one side, at its end, cut off slanting, and located with its slanting end so near the side of the glass cylinder that the drops of condensed water shall be delivered against the side of the glass or so near it as to practically disclose the oil be- tween the end of the tube and the glass. ' ' Jenks et al. V. Swift, 25 Fed. Rep. 722. — Wallace, 1885. 502. In complainant's patented hose, of textile fabric, the warp threads went through the whole structure from side to side. Defendant's warp threads went only half through from the inner side and the outer side, and tied the hose to- gether, all passing under and around an inter- mediate filling thread. Defendant was held to infringe. Beed v. Street, 34 O. G. 339.— Nixon, 1885. 503. For an example of a claim strictly con- strued in view of the state of the art, and de- fendants' somewhat similar machine held not to infringe, see — . Buseell v. Andrews et al., 35 Fed. Rep. 822.— Butler, 1885. 504. Complainant's improvement in drying- machines consisted of a combination specifying certain "heating pipes D," The specification described these heating pipes as flexible or joint- ed. Defendant's machine did not have the flexible or jointed pipes, and was held not to infringe. Sheeder v. Shannon, 35 Fed. Rep. 834, per curiam, 1885. 505. The claim in complainant's patent was .■ " The combination of the brim of a hat with a droopinghoop, so that the brim is caused to droop at the front and rear and to rise at the sides, substantially as set forth." In view of the state of the art, this claim was limited to a spring-hoop, bent or twisted in such a manner as to Impart a droop to the front and rear and an elevation to the sides thereof, the word " bent" being held to be synonymous with the word " twisted ;" and it was held that the droop must be imparted by twisting, and that if a hoop received its droop by bending there was no infringement, although the wire might be, in fact, twisted to some extent. Mallory M'fg Co. V. Hickoket al., 25 Fed. Rep. 837.— Ship- man, 1885. 506. In complainants' patented quilting-ma- chjne, the essential feature was the alternate ar- rangement of the needles. In defendant's ma- chine the needles were so duplicated that the alternate arrangement was not apparent at first glance, but was found to be present on analysis, j and it was held to infringe. Tate et al. v. Tliomas, 80 O. G. 345.— Wallace, 1885. 507. In complainant's patent for a wardrobe bedstead, a claim was : "In a wardrobe bed- stead the hinged folding sections A, B, C, se- cured to the uprights D, substantially as and for the purpose described." These sections were three folding doors ; defendants used only two, and were held not to infringe. Tobey Fur- niture Co. V. Colby et al., 36 Fed. Rep. 100.— Blodgett, 1885. 508. Defendants' improvement in wardrobe bedsteads was the utilization of a vertical spring to aid in lifting the bed. The court held de- fendants' device to be an equivalent for that of complainant's, but that, in view of the state of the art, complainant could not invoke the doc- trine of equivalents, and defendants therefore did not infringe. — lb. 509. Complainant's patent was for such lock cases as are used in the jaws of satchels and the like. He conceded that unless the claims of the patent were limited in construction so as to make certain end pieces, provided with notches or recesses, constituents of the claims, the claims were void for want of novelty. Such notches or recesses were not referred to specifically either in the specification or the claims. They were therefore held not to be within the claims. RoemerY. Neuman et al., 26 Fed. Rep. 103.^- Wallace, 1885. 510. The claim in complainants' patent was : " An Insulated gas-burner having its insulated section of or from glass or similar vitreous- ma- terial, substantially as and for the jDurpose specified." The court held that "this claim cannot be construed as a broad claim for a gas- burner in an electric lighting system having an insulated section of the material mentioned," and said further : "On the other hand, upon correct principles of construction, the claim should not be limited to an insulated burner having all the details of construction which are described in the specification." Defendants CONSTJIUGTION OF PATENT— SPECIFIC CASES. 171 changed the mode of fastening the conductors to the burner, but were held to infringe. Birdseye et al. v. Eeilner et al., 36 Fed. Rep. 147.— Wallace, 1885. 511. Complainant's patented device consisted in the adaptation of a mowing machine to a boat for the purpose of cutting grass, weeds, and the like under water. This machine used the well- known sickle- bar, with its motion given by a vibrating lever. Defendants substituted a vertical crank-shaft for this lever, and were held to infringe. Piper v. Sheddetal., 36 Fed. Rep. 151.— Blodgett, 1885. 513. In a patent for a door-check, the claim was : " The grooved screw I, for adjusting the vent, in combination with the packing H, pis- ton G, tube D, and coiled spring E or equiva- lent, substantially as herein shown and de- scribed." In complainant's device the cupped packing performed the double ofBce of a pack- ing and a valve, to admit the air to the piston, moving backward and closing when the piston moved forward. In defendants' device there was a piston with a cupped packing and a valve in the centre of the piston for the purpose of admitting air to the cylinder during the back- ward stroke and confining it during the forward stroke. Defendants were held to infringe. Nor- ton Door Check & Spring Co. v. Elliot Pneu- matic Boor Check Co. et al., 36 Fed. Rep. 330. —Colt, 1885. 513. A claim in complainant's patent on a door-check was for " the combination with a door and its jam of a compressed air door-check provided with an arm whereby its piston-rod may be operated, a guide-rod whereby the stroke of its piston will be controlled, and suitable for attachment of the arm, guide-rod, and door- check to the door or its jam, all connected and operating together substantially as and adapted for the purpose set forth." Taken in connec- tion with the specification and drawings, this was held to include as a part of the necessary mechanism the two pistons by which the arm was connected first to the guide-rod and, sec- ond, to the piston. As defendants did not use this particular device, they were held not to in- fringe. — lb. 514. The claim in complainant's patent was : "An insulated gas-burner having its insulated section of or from glass or similar vitreous ma- terial, substantially as and for the purpose speci- fied. " The court held that this could not be construed as a broad claim for a gas-burner in an electric lighting system having an insulated section of the material mentioned, for the paten- tee was not the first to discover the peculiar value of such material for that purpose. Nor, on the other hand, was the claim to be limited to an insulated burner having all the details of construction described in the specification, The court further held that the essential novelty con- sisted in selecting this appropriate insulating material and making from it the upper part of a gas-burner, serving to support and insulate the electrical conductors, and also as a. gas-way from the gas-pipe to the place where the spark was communicated to the gas. Defendant's de- vice differed from complainant's as regards the shoulder for fastening the conductor to the burner, but was held to infringe. Bogart v. Hinds, 34 O. G. 1510.— Wallace, 1885. 515. In complainant's patent for lumber drier a certain kind of flexible joint was shown and described. In view of the prior art, the patent was held restricted thereto ; and as defendant's device did not have this peculiar kind of joint, defendant was held not to infringe. Slteeder v. Shannon, 85 O. G. 138, per curiam, 1885. 516. A claim in complainant's patent in suit was: "1. A concrete pavement laid in detached blocks or sections, substantially in the manner shown and described. ' ' A disclaimer had been entered as follows ; ' ' Your petitioner hereby disclaims the forming of blocks from plastic material without interposing anything between their joints in the process of formation. ' ' De- fendant prepared first a pavement bed, and then placed parallel strips of plank diagonally across this bed from the curb to the inner side of the i pavement ; he then began with the first subdi- vision formed by these boards, and filled the space between them with a mass of concrete composed of Portland cement or broken stone or the like. Having done that, he did the same with the third subdivision. He then took a cleaver and drove it down a considerable dis- tance, and entirely through or nearly through the concrete mass, so as to mark off these nar- row subdivisions into blocks ; he then took a different substance, cement and sand in plastic form, and made an additional top coating over the concrete. After that had been smoothed, he, with a trowel, cut through the top surface exactly in line with the cuts below ; then what is called a jointer was run over the same lines, after which the pavement had a checkered ap- pearance of separate blocks. He then repeated this process with the second and fourth subdi- visions, and so on indefinitely. Defendant was held not to infringe. ScUUinger v. Granford, 37 O. G. 1349.— Hagneb, 1885. 517. Complainant stated that, in his improve- ment in bleaching xyloidine, he used " any of 172 CONSTEUCTION OF PATENT— SPECIFIC CASES. tlie well-known means, preferring a solution of chlorine or a solution of chloride of lime or soda. " Defendant used permanganate of potash , which was a known bleaching agent. Held to be an equivalent and an infringement. Spill v. Celluloid M'fg Co., 18 Blatch. 190.— Blatoh- PORD, 1880. 518. The claim in complainants' patent speci- fied a lever, to be operated by hand, as one ele- ment o|[ the combination. Defendants' macliine dispensed with the lever, and moved the parts directly by hand. Pefendants were held not to infringe. Brown et al. v. Davis et al., 116 U. S. 237.— Sep. Ct. 1886. 519. In complainant's patented spring for gloves, the arms of the springs constantly tended to close the mouth of the glove. In defendants' spring there were stiff arms pulling the parts to- gether only when closed far enough to have the spring on one arm operate in the opposite direc- tion upon the cam-shaped end of the other ; and defendants were held not to infringe. Field v. De Comean et al., 116 U. S. 187.— Sup. Ct. 1886. 530. Complainant's patented fare register had a tell-tale hand, which, when set with the trip- hand at zero, moved with it, and could not be set back to zero unless the trip-hand wore also set there. Defendant's fare register had a trip- hand ; and a tell-tale hand in each trip was left to show the place in commencing registration. The difference between the two was only in the means by which the trip-hand was brought there. Defendant's device was held to infringe. Bailway Register M'fg Co. v. Broadway & Sev- enth Ave. Railroad Co., 34 O. Qt. 931. — Whee- ler, 1886. 531. A claim was ; " I do claim [as a new article of manufacture] a tube or cylinder cast out of copper and free from blow-holes and other similar defects when produced as herein stated." The court said of this: " It Is for a new article of manufacture in the form of a cast copper tube or cylinder free from blow-holes and other similar defects when produced as describ- ed ;" and held that an infringing article muat have been produced in the same way described [ in the patent. Adams et al. v. Bridgewater Iron i Co. et al., 34 O. G. 1045.— Colt, 1886. j 533. Where a specification mentioned the in : vention as " a perfect cast copper cylinder,"] " free from blow-holes and other similar de- fects," the language was held to mean not that the articles must be absolutely free from blow- holes, but that it meant ' ' a cast copper cylinder so free from blow-holes as to be considered sound — that is, sufficiently perfect to be used in the arts for the purpose for which such copper cyl- inders were used." — lb. 533. In complainants' patented mould the mould itself rotated. Defendants rotated a pouring basin over the mould, and, attaining practically the same end, were held to infringe. —lb. 534. In complainant's patent for a hand- stamp, type were shown arranged upon or around a shell or cylinder by moving which the desired type were brought to the lower part of the shell, where they were passed into a slot in the plate there' located, and kept there by means of catch-spring and lugs. Defendants set their type into a metal box or frame and in- serted the box in a slot, and retained it in place by means of a catch-spring and lugs. Defend ants were held to infringe. Wilson v. Cubley et al., 36 Fed. Rep. 156.— Blodgett, 1886. 535. Complainant's claim was : "The com- bination in a bottle washer of a fixed or station- ary water supply- pipe ; a sleeve shaft mounted upon and adapted to be revolved about said stationary pipe ; a brush or scraper attached to the end of said shaft and about the end of said pipe, and adapted to be compressed to enter the neck of the bottle and to expand to the larg- est interior diameter of the bottle ; andafunnel- .shaped mouth-sleeve mounted upon and sur- rounding said sleeve-operating shaft, and en- closing a brush adapted to be moved endwise on said driving shaft, to uncover the brush and to be revolved with said shaft by frictional con- tact therewith or to be prevented from revolv- ing by frictional contact with the neck of the bottle, substantially as and for the purposes de- scribed." For complainant's stationary water supply-pipe, a sleeve shaft mounted upon it and adapted to be revolved about it, defendants sub- stituted a revolving water supply -pipe, lowering the brush at its forward end and jointed at the rear to the stationary supply pipe. In com- plainant's machine the sleeve revolved by fric- tional contact with the revolving brush ; the funnel-shaped mouthpiece was attached to the sleeve and therefore revolved with it, until, by the pressure of the bottle against the mouthpiece, the friction moving it was overcome. In de- fendants' machine the flaring mouth and sleeve were cut in two parts ; the mouth -piece was stationary and the sleeve was revolved positively by the pulley which revolved the brush. In the two machines the friction of the mouthpiece and the sleeve were the same. Defendants were held to infringe. Hoyt v. Sloeum et al., 36 Fed. Rep. 339.— Colt, 1888. 526. Aside from certain elements common to CONSTEUCTION OF PATENT-SPECIFIC CASES. 173 devices of the same general character, the specific mechanism of the defendant's device was substantially different from that in complainant's patent. Complainant's patent was limited to the particular mechanism described ; and defendant was held not to infringe. 81mw Relief Valve do. V. City of New Bedford, 36 Fed. Rep. 331.— Colt, 1886. 537. The claim in complainant's patent was for a combination, in a typewriter, of key-levers and type-levers. The type-levers of this claim were not described in it as of any particular form or class. In view of the prior ai-t, this claim was limited to levers of a peculiar form ; and defendant was held not to infringe. Phipps v. Tost, 36 Fed. Rep. 447.— Wallace, 1886. 538. In complainant's patent for a rivet-setting machine, the claim was : " The receiver N, pro- vided with the springs r, r, mounted upon the said plunger B, substantially as described." In defendant's machine the receiver was not attached to the plunger, and it consisted of a long lever pivoted at its rear end to the support- ing frame of the machine, a base of two elastic strips of metal flaring at their front ends to hold the rivet, the lever being thrown upward by the spring fixed to the arm of the machines. De- fendant was held not to infringe. Marchand v. Emken, 38 Blatch. 435.— Coxb, 1886. 539. The claim in complainant's patent was : " The process herein described of relieving stranded vessels by causing them to float in a fluid or semi-fluid by means of forcing continu- ous streams of fluid immediately around its bottom into the sand or mud in which the vessel is embedded or lies, for the purpose of washing away and softening the sand, while at the same time a lateral movement or strain is imparted to the vessel by means of warping lines or equiva- lent means whereby it may be moved into deeper water, substantially as and for the purpose set forth. " Defendants used a stream of water for the purpose of [in a similar manner] removing suspected wreckage from beneath a stranded ves- sel, their process being substantially that which was old in removing obstructions to the sinking of piles. Defendants were held not to infringe, Knapp V. Benedict et al,,'26 Fed. Rep. 637.— Shipman, 1886. 530. A claim in a patent for a screw-machine was construed to include two sleeves, a certain inner sleeve and a certain outer sleeve. In the actual construction shown in the patent there was nothing interposed between these two sleeves, and defendants contended that the patent should be limited to such a construction. The court held the fact immaterial. Hartford Mack. Screw Co. v. Reynolds et al., 36 Fed. Rep. 528. — Shipman, 1886. 531. The claim in complainant's patent was : " The process herein set forth of manufacturing celluloid by the addition to the mass composed of pyroxyline and gum camphor of a solvent of gum camphor in about the proportion set forth, and previous to mastication, heat, and press- ure." The court held that, as compared with the prior art, this was ' ' an improved^ process whereby, instead of mixing a solid and liquid, and straining the mass to remove undissolved particles, and evaporating the liquid in an air- tight condenser, the inventors mixed two solids and added a liquid ; then, having pressed out the moisture and masticated the compound by rolls, they relied upon heat and pressure to effect oi complete the traasf ormation into solid celluloid. ' ' The defendants ]nixed dry gum camphor with pyroxyline liquid abnormally dry,; then added the alcohol, and did not subject the mixture to pressure for the purpose of expelling dampness. Defendants were held to infringe. Celluloid M'fg Co. V. Am. Zylonite Co. et al. , 33 Blatch. 444.— Shipman, 1886. 533. The claim in complainant's patent for a baling press was ; "1, The combination of the lever or sweep H with the lever G, follower F, and box A, of a baling press, when constructed to operate as herein described. ' ' The court held that this was a claim " for the combination therein named, involving, as essential thereto, the peculiar construction of the press box," Bed- erick v. Whitman Agricultural Co., 36 Fed. Rep. 763.— Treat, 1886, 533. The claim in complainant's patent for a lock was ; " The arrangement of two or more rollers H, H', varying eccentrically when com- bined with the cam, in the manner and for the purpose specified." Defendant used the combination, except that the rollers were not " varying eccentrically ," and defendant was held not to infringe. Yale Lock M'fg Co. v. Sar- gent, 117 U. S. 373,— Sup, Ct. 1886. 534. Complainant's patent had, among other claims, three for combinations, of which one ele- ment was a toggle joint mechanism. Defendants substituted another mechanism in the place of the toggle-joint for the same purpose, and were held to infringe. Wheeler v. Morris etal, 26 Fed. Rep. 918.— Woods, 1886. 535. The claim in complainant's patent was : "The rotating tumbler I, when separated and isolated in action from the permutation wheels, and so arranged that any inward pressure upon the bolt will be exerted on the bearing of said tumbler and have no action nor effect upon the 174 CONSTRUCTION OF PATENT— SPECIFIC CASES. said permutation wheels, substantially as and for the purpose herein specified." Defendant's lock had a bolt turning on a pivot, substantially like complainant's bolt. It prevented and per- mitted the retraction of the bolt-work in the door in the same manner. It had no sliding bolt. The turning bolt was arranged to serve as a stop to two sets of bolt- works instead of one, but in respect to that one set there was the same mode of operation in both locks. Fur- thermore, in the lock of complainant's patent the fence lever was connected with the turning bolt by a rack on the end of the lever, engaging with the cog teeth on the bolt, while in defend- ant's lock the end of the lever was pivoted di- rectly to the turning bolt. Defendant was held to infringe. Yale Lock M 'fg Co. v. Sargent, 117 U. S. 537.-SOT. Ct. 1886. 536. For an example of a claim in a patent for a carpet-stretcher held limited to the exact device shown and described in the prior art, see — . Montross et al. v. BuUa/rd et al., 27 Fed. Rep. 64.— Blodqett, 1886. 537. The claim in complainant's patent was : " ' [1] The face-guard or safety mask, substan- tially as described, for the purpose specified, consisting of the open cage and forehead and chin-rests or bearings, all combined and ar- ranged essentially as set forth. [3] The open cage provided with the forehead-rest arranged in it, substantially as represented." The old fencing mask of the prior art showed no head- rest or chin-rest, and therefore complainant was held entitled to broad construction. Thayer v. Spaulding, 27 Fed. Rep. 66.— Blodgett, 1886. 538. One of the constituents of complainants' patented baking powder was alum. Defendants substituted a percentage of acid phosphate. Complainants' experts testified that the two were equivalents. Such a construction of the claim made it void, therefore so broad a construction was held to be forbidden. Smith et al. v. Mur- ray et al., 27 Fed. Rep. 69.— Blodsett, 1886. 539. For an example of a patent for a skein for wagon axles held limited to the exact thing shown and described, by the prior art, see — . Brown & Van Arsalale M'fg Co. v. Studebaker Bros. M'fg Co., 37 Fed. Rep. 73.— Blodgett, 1886. 540. A claim in complainant's patent was : "The combination with a series of pathways, of equal lengths, of means for guiding the suc- cessive sheets into different pathways and means for retarding the speed of the advance sheet un- til the following sheet is abreast thereof, sub- stantially as described. " The sheets, as they fol- lowed each other from a web printing-press. were caused to travel in different pathways of equal lengths, and stop or retard the advance sheet until the following sheet or sheets were brought abreast of it, and they then moved at a given rate of speed to a point where they came together. Hoe, being the first to combine these elements and produce a given result, was held, therefore, entitled to protection against the use of equivalents by others. Hoe et al. v. Knapp et al., 27 Fed. Rep. 304.— Blodgett, 1886. 541. In complainants' patent, for folding ma- chine, a claim was: "The combination of brake-arms, rest-locks, and supporting carry- ing-tapes, substantially as described." Thereof the court said : " I am of opinion that the true construction of this claim requires that the brajie- arms, rest-plates, and carrying-tapes are to co- operate with the following plates or rollers. In other words, that the following plates or rollers are to be read into the claim ; and under this construction the defendants do not infringe, as the only place where they stop or retain their sheets is In the double pathway for the purpose of superimposition. " — lb. 543. The claim in complainants' patent was : "1. The method of forming the body of a coal hod or other similar vessel, which consists, sub- stantially as before set forth, in first forming a cone-shaped body from a suitable blank, then folding in the cone end of said body, in crimps, to form the bottom." This folding in of the crimps made the bottom of the hod stronger and at the same time made the bottom and sides in- tegral. Defendant availed itself of that feat- ure of the patent which consisted in using the same piece of metal to form the sides and bottom, so that the bottom would be of an increased thickness of metal ; and in order to decrease the cost of production or to evade the patent, formed only a part of the bottom from the metal of the sides, and then closed the space between the fold- ed ends with a cap. Defendant was held to in- fringe. Hoff et al. V. Iron Clad M'fg Co., 33 Blatch. 481. Wallace, 1886. 543. The claim in complainant's patent was : " ' A nail made by punching or cutting from hot rolled, ribbed bars of metal a headed blank, substantially as described, and by elongating, hardening, and compressing the shanks of such blanks by cold rolling from the head to the point, thereby giving to all parts of the nail so produced the superior qualities specified. ' " In view of the state of the art, the court said : " The claim of this patent must be strictly fcon- strued, and confined to the making of nails by punching or cutting from hot-rolled, ribbed bars of metal, a headed blank, and the subse- CONSTRUCTION OF PATENT— SPECIFIC CASES. 175 quent cold rolling as an entire process ; and the claim cannot be extended so as to include the process of the older art of hot rolling the blanks from rods, and finishing by cold rolling. ' ' Olobe Nail Co. V. Supenor Mail Co. et al. , 27 Fed. Rep. 450.— Blodgett, 1886. 544. The claim in complainants' patent for hoisting apparatus was : " The combination and arrangement of levers and connections, sub- stantially as herein described, whereby the brake is automatically applied while the valve is closed and withdrawn when the valve is open to set the apparatus in motion." In view of the prior art, the court held complainants limited to the peculiar arrangements of parts shown. For one element of the combination defendant had substituted a certain heart-shaped cam. De- fendant was held not to infringe. Otis Bros. M'fg Co. et al. v. Crane Bros. M'fg Co., 37 Fed. Rep. 550.— Blodgett, 1886, 545. The claim in complainants' patent for gas and water pipes was : " The combination of a composition of hard-boiled tar and sawdust with wooden pipes, applied in the manner and for the purpose set forth. " Defendants used auger borings, and were lield to infringe, , Hob- bieet al. v. Smith et al., 27 Fed. Rep. 656.— CoxE, 1886. 546. The claim in complainant's patent for sash fa.stener was : " The improved sash lock fastening, consisting of the elevated plate C, having shouldered notches «, c, c, pivot E, for swinging latch-bar F, /. and the hinged pendant H, for attachment to the lower sash, in combina lion with a stationary spur or cam-hook upon the upper sash, substantially as set forth." Thereof the court said : " The first claim of the plaintiff's patent must be construed in accord- ance with the extent of his invention, which was a base plate elevated above the lower sash, so that the hinged pendant could engage with notches upon the base plate proper, irrespective of the thickness of the sash, and cannot cover a fastener, although having a plate elevated above the lower sash, which fastener is furnished with a weighted latch which engages with notches on the edge of the flange at the top of the post above the sweep ;" and found the defendants not to be infringers. Morris v. Kempshall M'fg Co. et al., 27 Fed. Rep, 748.— Shipman, 1886. 547. The claim in complainants' patent for car wheel was ; "I do not claim a car wheel pro- vided with a detachable cap or oil-cup, nor the employment of a perforated journal-box in con- nection therewith ; but what I claim is [1] the combination with the hub N, having chamber O, and oil passages g, in its front inner bearing li, and the oil-holding cup A, of the box S, hav- ing the perforations n, all as shown and de- scribed, whereby the lubricant has free circula- tion around said box and access to the journal, as specified." In defendants' car-wheel the oil cup was made separate and detachable from the body of the wheel, and the journal-box was not removable, but cast solid with the body of the wheels. In view of the prior art, complainants were limited to their precise claim and defend- ants were held not to infringe. Osceola M'fg Co. et al. V. Pie et al., 28 Fed. Rep. 83.— Ache- son, 1886. 548. A claim in complainant's patent for tele- graph transmitters was : " [3] The combina- tion, in a telegraph key, of the lever fulcrumed upon the torsional spring, with the adjusting screws H, H, for regulating the amplitude of the movement and the retractile resistance of the torsional spring, substantially as described." Defendant's device was technically a " sounder" rather than a telegraph key, and defendant was held to infringe, La Hue v. Western Electric Co., 28 Fed, Rep, 85 —Brown, 1886. 549. A claim in a patent for a grinding ma- chine specified ' ' suitable gearing ' ' Thereof the court said ' ' The claim must be understood broadly, as described by its terms, embracing any suitable gearing which may be employed for the clog arrangement described in the , claim." CoJumsey Glass M'fg Co. v. WTiarton, 28 Fed, Rep. 189.— BtJTLBR, 1886. 550. A claim in complainant's patent for clover-hulling machine was "2. The combina tion in one machine of the open upper cylinder with the open lower cylinder, substantially as and for the purposes described." Defendants' machine did not have the open lower cylinder, but one whose circumference between the bars was made up of corrugated iron plates which were removable, and, when removed, access could be had to the screws of the spikes, as in any open cylinder. The prior art contained ap- proximations to complainant's patented machine. Defendants were held not to infringe. Newark Mach. Co. V. Hargett et al., 36 O. G. .692.— Bond and Morbis, 1886. 551. A claim in complainant's patent for clover-hulling machine was : " In combination with a hulling cylinder, the rubbers b, b, having roughened sides and rounded front edges 7i, sub- stantially as and for the purposes described." Rubbers with roughened sides but with notched front edges were old. Defendants' rubbers did not have rounded front edges, but those of a blunt wedge shape. Defendants were held not to Infringe. — lb. 176 CONSTRUCTION OF PATENT— SPECIFIC CASES. 553. The claim in complainants' patent was : " 1. The combination of a chronometric or time- lock and a supplemental locking mechanism, consisting of a dog or chect, out of action dur- ing the normal condition of the time-lock, some part of this supplemental mechanism being ar- ranged in proximity to the lock, substantially as set forth, whereby the supplemental dog or check will be brought into action to prevent the retraction of the 'door-bolts of the safe or vault on which the time-lock is used, on the occur- rence of a chock capable of breaking or displac- ing the parts of such lock." The inventor seemed to the court " to have taken a step for- ward of all who had preceded him in this field, and to be entitled to a liberal construction of the first claim of his patent, so as to cover any supplemental locking mechanism which, when used in combination with a time-lock, shall pre- vent the retraction of the door-bolts in case of such shock or violence as will disable the time- lock, because he seems to have been the first to have discovered the need of such meclianism and to have supplied the want. " Newbwy et al. V. FowUr etal, 36 O. 6 817 - Blodgett, 1886. 553, A claim in complainant's patent was " The combination in a horse nail machine of a feed wheel, a roll die, and a nail-roll, together with their respective connections with the main shaft, substantially as hereinbefore described, so that the nail may be brought into position in front of the die before the die is advanced, and the die be advanced before the roll begins its | work." In defendants' machine a part of the devices took their direct movement frcjm a coun- ter shaft. Defendants were held to infringe. Northwestern Horse Nail Co. v. New Haven Horse Nail Co. etal., 28 Fed. Rep. 234.— Ship- man, 1886. 554. The claim in complainant's patent was : "1. The mode herein described for attaching buttons to garments by a single pointed malle- able tack, consisting in passing the shank of the tack through the garment, ^nd then turning or clinching its end through and around the eye of the button by pressing the point against the clinching portion of the device, which holds the button while the clinching is being performed, substantially as described." In the patented machine the button was so situated that the tack went forward to the clinching die on a line par- allel with the flat side of the eye of the button ; in defendant's machine the button was so situ- ated that the tack in going forward was presented to the hole of the eye at right angles to the flat side of the eye, and therefore passed through the eye before reaching the clinching die ; the differ- ence was held immaterial, and defendant was held to infringe. Belle Patent Button B'astener Co. v. Lucas, 28 Fed. Rep. 371.— Colt, 1886. 555. The claim of the patent in suit, for glass- annealing furnace, was : " The combination of the bars d d, arranged side by side and alternately between each other, the set d supporting the sets of glass, while the bars d are pushed toward the leer or flattening wheel a, and the sets d sup- porting the sheets of glass and moving them onward and through the tunnel, substantially as set forth. ' ' The distinguishing feature of the patented invention was that the sheets of glass travelled through the leer, elevated above the floor, away from the disturbing influences of the conditions there existing, and so as to be sub- jected to the heated currents of air whereby they were uniformly annealed. The specification of the patent did not specifically claim the elevated parts, but the specification so described them. The claim was construed so as to include them. In defendants' tunnel or leer the grooved wheels which supported the reciprocating bars were sustained from above instead of from below, and the rest bars were fastened rigidly to the im- movable cross bars, and consequently had no movement Defendants were held to infringe. TondewY. Stewart et al., 28 Fed. Rep. 561 — AcHKSON, 1886 556 The claim in complainant's patent for lantern was " ' The tubular frame D, D, and the globe G, in combination with the plates C, p, the connecting rods F, and the guides H, whereby said globe is raised by a suitable lever and guided or steadied laterally in its move- ments, for the purpose set forth.'" Defend- ant's lantern had a tubular frame and a globe, in combination with a concave annular top plate, a perforated bottom plate, a connecting rod, and guides. In the place of the ' ' suitable lever" defendant had a thumb piece. Defendant was held to infringe. Steam Gauge & Lantern Co. V. Ham M'fg Co., 28 Fed. Rep. 618.— Coxe, 1886. 557. The patent in suit was for a sole-edge burnishing machine. The principal question was whether, by the terms of the patent, the top sole was to be pressed against the upper surface of the finger-rest. The specification said : "My machine is extremely simple, and consists of a head or standard carrying a tool-holder holding a tool for setting or burnishing the edges of the soles of boots and shoes, and a finger-rest to aid the workman in holding the edge up to the tool, and the face of the sole against the rest, which is just below the burnishing part of the tool." CONSTEUOTION OF PATENT— SPECIFIC OASES. 177 The claim was : ' ' "What. I claim as my invention is, [1] in combination -with the burnishing tool and the rest for the face of the sole, the finger rest D, substantially as described. " The court held the affirmative of the above question. Union Edge-Setter Co. v. Keith, 28 Fed. Rep. 715.— Colt, 1886. 558. Complainants' patent in suit was for im- provement in mode of mounting time-locks, the object being to isolate the lock from the main outer door of the safe, and the patent described three ways of doing this : first, attaching it to the face of the inner door ; second, mounting it on a hinged bar behind the main door ; and third, supporting it on a fixed standard rising from the floor of the safe. In the prior art time-locks had been mounted on a strip of metal attached at one or both ends to the bolt-frame of the safe door. They had also been mounted on a plate which was bolted to one of the bars of the bolt- frame. They had been attached to plates sup- ported from the door by standards or thimbles ; they had been fastened to wooden blocks placed in one corner of the safe ; rubber washers had been interposed between the time-locks and the door to which they were secured ; safes had been divided into two compartments by a vertical partition, with the lock mounted on the partition only. The claims were very broad in their scope, but, in view of the prior art, were limited strictly. Newbury et al. v. Squaires et al., 28 Fed. Rep. 752. -Colt, 1886. 559. There were two patents in suit. The claim of one was : "A safety valve with a cir- cular or annular flange or lip c c constructed in the manner, or substantially in the manner shown, so as to operate as and for the purpose herein described." The claim of the other was : " The combination of the surface beyond the seat of the safety valve, with the means herein described for regulating or adjusting the area of the passagp for the escape of steam, sub- stantially as and for the purpose described." Defendant's valves had no huddling chamber and no strictured orifice leading from the huddling chamber to the open air. Defendant was held not to infringe. Consolidated Safety Valve Co. V. Eunkle, 7 Sup. Ct. Rep. 50.— Sup. Ct. 1886. 560. Complainants' patent in suit was for an improvement in paper-bag machines, and a claim thereof was : " [8] As an improvement in the art of forming satchel-bottomed paper bags by machinery, the method hereinbefore set forth of opening the end of a tubular blank and forming the first fold thereof by means of the conjoint action of the two adjacent delivering moving surfaces, substantially the same as described, be- tween which the blank is continually fed, and to which surfaces the continuous sides of the blank are caused temporarily to conform as they move over said surfaces by means substantially such as described, whereby the fold is formed, while the blank is in motion simply by the strain upon the paper itself." In defendants' ma- chine there was one roller which drew away one side of the blank and partially formed a diamond fold on that side. At the same time a spear- pointed separator, acting conjointly with this roller, helped to bring the other side of the blank into shape so that when the blank passed through the second pair of rollers the diamond fold was only on that side. At the same time a spear- pointed separator, acting conjointly with this roller, helped to bring the other end of the blank into shape, so that when the blank passed through the second pair of rollers, the diamond fold was completed by the compression of the paper on itself ; and in defendants' machine there was no second divergent moving roller, and the fold was not formed by the conjoint of the two diverging moving surfaces. Defendants were held not to infringe. Union Paper-Bag Mach. Co. et al. v. Standard Paper-Bag Co. et al., 29 Fed. Rep. 96.— Colt, 1886. 561. Complainant's patent in suit was for grain separators, and the claims thereof were : " 1. A recleaning attachment for grain separa- toi's, consisting essentially of a hopper, a screen for receiving the grain from the hopper, an ele- vator having a chamber at its lower end and its upper end arranged to deliver the grain to the hopper, and an inclined conductor having one end connected with the chamber of the elevator and its upper end formed into a mouth arranged under the discharge mouth of the screen to con- vey the tailings to the chamber of the elevator, substantially as set forth. 2. The combination with a separator of a recleaning device, consist- ing essentially of a screen, an elevator for elevat- ing the tailings to the screen, and aspout arranged directly between the screen and the elevator for receiving the tailings from the screens and dis- charging them into the elevator frame or cas- ing. " In the light of the prior art these claims were construed strictly. Defendants' machine did not have " a spout arranged directly between the screen and the elevator," nor " an inclined conductor having one end connected directly with the chamber of the elevator," and defend- ants were held not to infringe. Newark Mach. Co. V. Qai-r et al., 37 0. G. 1250.— Woods, 1886. 562. The patent in suit was for a suspender buckle. The buckle frame was made by cut- ting the blank from a sheet of metal and then 178 CONSTRUCTION OF PATENT— SPECIFIC CASES. striking up two wings on opposite ends of the blank until their edges were brought close to- gether ; and an elongated narrow space, in which the suspender cloth was enclosed, was left be- tween the wings and the front part of the frame. These arms were elastic, and produced a spring - clamp which would yield from inside pressure, but which would exert a binding force and pres- . sure against the web. The claims were : " [1] A suspender buckle having a frame or bow formed with a spring-clamp, divided at its centre, and integral therewith, and adapted to embrace and bind the web or suspender cloth, substantially as shown and described." "[2] In a suspender buckle the combination wijh a frame or bow having a spring-clamp to embrace the web or suspender cloth, and slotted to re- ceive a tongue, adapted for the attachment of the suspender-straps, and having a flanged edge or lip to impinge upon the web or cloth, and hold it against tlie clamp, substantially as de- scribed." " [3] The buckle frame or bow, con- sisting of the metallic plate A, struck up or bent into shape, and having the inwardly turned leaves or wings a, a, forming a clamp-spring or springs, and having the elongated space b, sub- stantially as described. " ' ' [4] The combination of the buckle frame, consisting of the plate A, provided with inwardly bent elastic clamp-arms a, a, and having the slot e, and the movable tongue H, fitting and working in said slot, and formed with flange or lip h, substantially as de- scribed. " One kind of defendant's buckles had a long arm bent over it, but under a short bent arm on the other side. These two arms formed an elongated, space in which the web was enclos- ed ; not being fastened to each other, they made a spring-clamp not divided in the centre ; as to this kind of buckle, it was held that the first claim was not infringed. Another kind of de- fendant's buckle had two short wings turned back and locked to each other by a strip of metal extending across the width of the front part of the frame and forming the back of the elongated space. It was held not to infringe. Bruff V. Waterbury Buckle Co., 29 Fed. Rep. 214.— Shipman, 1886, 563. The patent in suit was for a hydraulic jack, and the claims were : " [1] The combina- tion and arrangement of the pump-plunger, con- structed with the longitudinal passages, the pump-barrel, and the reverse passages, substan- tially as set forth. " " [2] The combination and arrangement of the pump-plunger, the pump- barrel, with its reverse passage, the egress-valve, and the guard thereof, substantially as set forth. " Defendants cut away more of the pump-plunger | I and less of the pump-barrel than the complain- ] ant. The methods of forcing liquid around the ; ingress-valve when the ram was lowered were I identical, except that, instead of the longitudinal ! passages in the plunger, the metal was cut away around its entire circumference, making a much wider channel. In the pump-barrel, on the con- trary, instead of cutting the surface away around its inner periphery, as in the patent, the defend- ants at the same point substituted reverse pas- sages bored through the wall of the barrel. De- fendants were held to infringe. Dudgeon v. Watson etal., 29 Fed. Rep. 248.— Coxb, 1886. 564. The claims of the patent in suit were : "1. A concrete pavement laid in detached blocks or sections, substantially in the manner shown and described." "2. The arrangement of tar paper or its equivalent between the adjoining blocks of conci-ete, substantially as and for the purpose set forth. ' ' Subsequently there was a disclaimer to " the forming of blocks from plas- tic material without interposing anything be- tween their joints while in the process of forma- tion." Defendant laid his pavenient in a mass, and then marked it crosswise with a blunt marker, producing a division in the blocks. De- fendant was held not to infringe. Oal. Artificiai Stone Paving Co. v. Schalicke, 119 U. S. 401. — Sup. Ct. 1886. 565. The claims of the patent in suit were : " [1] In a lantern having a globe-supporting frame, the vertically adjustable plate C, carrying a spring E, adapted to hold or release the globe, as desired, in combination with the globe, the perforated plate on which it rests, the connecting rods F, F, serving to unite the top and bottom plates, and suitable guides, adapted to give lateral support to the lower part of the globe, substantially as set forth." " [2] The tubular frame D, D, and the globe G, in combination with the plates C, p, the connecting rods F, and the guides H, whereby said globe is raised and lowered by a suitable lever, and guided or stead- ied laterally in its movement, for the purpose set forth. " Respondents' lantern differed from the complainants' only in the following particulars : in the former the side wires were hooked into the lower perforated plate instead of being wound around or under it ; and in place of guides they were supported laterally by being bent partly around the side tubes. The spring connecting the upper part of the globe was some- what different from that shown in the drawings of the patent. Defendants were held to in- fringe. Steam Gauge & Lantern Co. et al. v. Bagers et al, 29 Fed. Rep. 453.— Nelson, 1886. 566. The claim of the patent in suit was : "In CONSTRUCTION OF PATENT— SPECIFIC CASES. 179 an apparatus for lighting gas by electricity, in combination with a circuit breaker located at the gas-burner, a lever adapted and arranged to open and close the stop cock or valve of the burner, and carrying the circuit breaker, sub- stantially as herein described. ' ' In respondent's apparatus the two armatures operated to open and close the gas valve, but there was found in it no separate lever to open and close the valve and carry the circuit breaker, found in the pat- ent. Respondent was held not to infringe. Electric Oas Lighting Co. v. Boston Electric Co , 29 Fed Rep 455 —Colt, 1886 567. The patent in suit was for an improve ment in pipe couplings, and a claim thereof was " The rods or tubes A, A. having tapering ends and tapering threads upon the same, in combina- tion with a sleeve having tapering sockets and threads corresponding to those of the rods, as. set forth." In defendants' coupling the thread was cut with a vanishing thread and the sleeve had a vanishing thread, but the coupling did not have a rod with a tapering end or screw or a tapering socket. In defendants' device the threads of the screw surrounded a cone-shaped stem, but the exterior lines of the threads formed a cylinder and not a cone-shaped or tapering end or screw, and the exterior lines of the sleeves formed a cylindrical chamber, and not a cone- shaped or tapering chamber Defendants were held not to infringe Allison v Trustees of N.T.& Brooklyn Bridge 39 Fed Rep 517,— Wallace 1886 568 The patent in suit was for an improve- ment in hydrocarbon stoves, and a claim thereof was ■ " 1, The water vessel A, with its perfo rated top plate A and hot-air cylinder C, hinged at c to plate A and to top perforated plate L. all arranged and constructed together substan tially as and for the purpose set forth." The specification said " Concentrically arranged around this central opening is a series of perfora- tions It, through which atmospheric air passes down into the top part of the vessel A, and thence up through the hot air cylinder and its chimneys." In defendants' stove the air cylin der rested on three equidistant strips, extending from the base of the cylinder to the wall of the water chamber. Defendants were held not to infringe. Sharp v. Riessner et al., 119 U. S. 631.— Sup. Ct. 1887. ■ 569. The claims of the patent in suit, the same being for a curtain fixture, were : "1. The arm or detent k, arranged upon the roller in such a manner that it is moved toward and away from the centre or axis of the roller by the action of gravity and centrifugal force, substantially as described." "3. The combination and ar- rangement at the same end of a shade roller of a spring e, rod d, and arm or detent k, or their mechanical equivalents, substantially as de- scribed." The court held that "the claims must be confined, by reference to the specifica- tion, to the use of the devices named, in a shade roller where the pawl or detent is upon the roll- er moving with it, and the ratchet or engaging part is separated by being placed upon a journal box or bracket, or other fixed part of the mech- anism, and that it must also be liriiited to the particular form of the arm or detent described. " In respondents' roller the pawl and the ratchet were both upon one end of the roller, the pawl being fixed upon the revolving part and the ratchet upon the fixed part of the roller, and the pawl and the ratchet were of a different form from those of the patent. Respondents were held not to infringe. Hartshorn v. Saginaw Barrel Go. et al., 119 U. S. 664.— Sup. Ct. 1887. 570. The patent in suit was for an improve- ment in automatic pressure relief apparatus for beer vessels, and a claim thereof was : "In an automatic pressure relief apparatus, a mechan- ical fit valve, in combination with a surrounding chamber K, for containing water to prevent the valve fouling, for the purpose set forth." Re- spondent's device contained only one water chamber into which the gas escaped as it passed the lips of the valve, while the patent described a device with a water chamber below and above the valve Respondent was held to infringe. Consolidated Bunging Apparatus Co v Woerle, 39 Fed. Rep 449 — Blodgett, 1887. 571 The patent in suit was for making satchel- bottomed paper bags, and a claim thereof was ■. " The finger N, or equivalent device, whether fixed or movable, to operate upon the inner side of the tube, and hold or punch back a portion of the open end of the tube while the diamond fold is being formed. "' In defendants machine the diamond fold was formed . or partially formed, by means of nippers mounted on a movable roller which took hold of the upper ply of the tube and threw it a proper distance over the roller while the under ply of the tube was held down by a spear-pointed separator. Defendants were held not to be infringers. Eastern Paper- Bag Co. et al. V. Standard Paper-Bag Co. et al. , 39 Fed. Rep. 787.— Colt, 1887. 573. For an example of a claim narrowl." con- strued, and thereupon defendants' mechanism found not to infringe, see — . lb. 573. The patent in suit was for a fruit drier, and the claim in issue was : "4. In combination with a fruit drier, the outer part of which is 180 CONSTRUCTION OF PATENT— SPECIFIC CASES. made up of the frames of several trays, as ex- plained, a suspending device, operating substan- tially as described, and supporting said drier from a point in or on the lowermost tray thereof, for the object named. ' ' Thereof the Supreme Court said ; " Movable trays, the outer walls of which constituted the drying chambers, being old, and apparatus having existed before to raise a tray or rack and a column of racks above it, and insert a fresh one at the bottom, and the two having been used in connection, the fourth claim of plaintiff's patent must be limited to the mechanism described and shown " Plaintiff's patented device had a crane with suspended ropes, and liis lowermost tray, while being raised, necessarily carried on it the weight of all the trays and fruit above it. In the respondent's apparatus each tray could be lifted independent- ly of the other, and each tray was supported in- dependently, so that the weight of the series of trays, and of the fruit on them, did not rest directly on the lowermost tray. Respondent was held not to infringe. Qrier v. Wilt, 130 U. S. 412.— Sup. Ct. 1887. 574. The claim of complainant's patent in suit was "A barb for double strand cable wire fences, composed of two pointed pieces of wire, each of which passes over a strand of the cable, thence between its strands, and reciprocally binds the other wire to the strand of the cable, wherefrom the points of the wires project as from a centre, substantially asset forth." Each of the prongs of defendants' barb, which passed between the strands, was wound tightlj' around one of the strands, but did not pass around the other prong Defendants were held to infringe Iowa Barb Steel- Wire Co v. Southern Barbed Wire Co. et al , 29 Fed Rep. 863.— Treat, 1887. 575. The patent in issue was the Schillinger patent for making pavement. The court thus described thcoperations of the defendant : "He first lays a lower course of concrete from two and one half to four inches in thickness ; then re- moves the scantling forming the frame for the block against the edges of the concrete, places paper, or sand, or wood to separate it from the adjoining block in the same manner as the first was formed, and eventually covers the lower course of concrete with an upper course of finer concrete from one half to three fourths of an inch thick, and cuts through the upper course with a trowel, so as to make the joints of the upper course coincide with the joints of the lower course, which are filled with the material above stated— that is to say, with paper, sand, or wood." Defendant was found to infringe. Shannon v, Brunner, 41 O. G. 697.— Thater, 1887. 576. The claim in suit was as follows : " The method herein set forth of waxing paper, con- sisting in spreading wax upon its surface, heat- ing the paper from the opposite side to spread and fuse the wax into the fabric of the paper, removing the surplus wax and remelting and polishing the wax upon the paper, substantially as set forth." The court described defendant's process as follows ; " The paper is passed from a supply reel over and in contact with a heated cylinder which revolves, partly submerged in a vat containing melted parafBne, thus receiving the wax. to and over a heated roller which diffuses the wax equally ; then to and over a scraper which removes the surplus wax, and finally over a polishing roller. A scraper is also attached to the roller cylinder that takes up the melted parafflne and applies it to the paper. This scraper is applied between the wax-trough and the place of contact with the paper, for the purpose of removing the surplus wax and dis- tributing the remaining wax uniformly over the cylinder. " Defendant was held not to infringe. Haminerschlafi M'fg Co. v. Bancroft, 40 O. G. 1339.— Grbsham, 1887. 577. For an example of a patent construed in view of the prior art, and thereupon defendants found not to infringe, see — . Aa Sable Horse Nail Co. V. Essex Horse Nail Co. et al. , 41 O. 6. 855 — Blatchford, 1887 578- The patent in suit was for a spark ar- rester for locomotives, and the claim in issue was: "What we claim," etc, "is [1] ^the grating D, with vertical bars placed at the foot of the spark or petticoat-pipe E, in the manner and for the purpose substantially as described." In the patented arrester the vertical bars were of wrought iron having stiffening pieces or bars. Defendant had a casting substantially the same, and was held to infringe. Kearney et al. v. Le- high Valley R R. Co., 32 Fed. Rep. 330.— Bradley, 1887 579. Bell was the discoverer of the new art of transmitting speech by electricity, and his claim should receive the broadest interpretation to se- cure to the inventor not the abstract right of sending sounds by telegraph, but with regard to means and processes described which are essen- tial to the application of his principle. Am. Bell Tel. Co. v. Globe Tel. Co. et al., 81 Fed. Rep. 739.— Wallace, 1887. 580. The patent in suit was toi a steam bell- ringer, and the claim in issue was : " The com- bination of the cylinder A, piston G, piston-rod D, slotted rod C, and crank B, when constructed CONSTRUCTION OF PATENT— SPECIFIC CASES. 181 and operated substantially as described." Thereof the court said : " The language of the specification limits thd first claim to a combina- tion in which the piston and piston-rod are de- tached from each other." As the piston and piston-rod of defendant's device were not de- tached from each other, the defendant was held not to infringe. Snow et al. v. Lake Slwre <£ Mich. Southern B. B. Co., 121 U. S. 617.— Sup. Ct. 1887. 581. The patent in suit was the Green driven- well patent, and the claim in issue was : " The process of constructing wells by driving or forc- ing an instrument into the ground until it is projected into the water without removing the earth upward, as it is in boring, substantially as herein described." Defendants bored their well until they came to the water-bearing stratum, then drove it lower, after Green's method ; and were held to infringe. Eamea v. Andrews et aX., 122 U. S. 40.— Sup. Ct. 1887. 582. The patent in suit was for a lubricator, and the claims thereof were : " [1] The arrange- ment of the cock M, passages S, S', and tubes O and P, with the oil reservoir F, and gauge J, E, as hereinbefore shown and described, for the purposes specified. [2] The improved lubricator, consisting of the parts herein described, con- structed and arranged substantially as specified. ' ' The second claim only was in issue, and the question was whether the elements of the first claim were included in the second. The court held that they were. Seibert Cylinder Oil-Cup Co. V. Nightingale et al., 32 Fed. Rep. 171. — Colt, 1887. 583. The patent in suit was for a dress-form, and the claim in issue was : " In combination with the standard a and ribs e, the double braces e and sliding blocks /' and f, and rests ft' and /;', substantially as and for the purpose set forth." The double braces referred to in the claim extended in diilerent directions. In the dress-form complained of the braces were of unequal lengths and extended in the same direc- tion, whereby a substantial advantage was se- cured. Defendants were held not to infringe. MorssY. Manch£8ter et al., 32 Fed. Rep. 282.— Benedict, 1887. 584. For an example of a patent on knob latches strictly construed in view of the prior art, and thereupon defendant's device, much the same as that of complainant's, held not to in- fringe, see — . Nashua Lock Co. v. Norwich Lode M'fg Co., 33 Fed. Rep. 87.-Shipman, 1887. 585. The patent in suit was for an improve- ment in sofa bedsteads, and the claim in issue was : " In combination with the sections A and B, the folding-rods F, F, and the head-boards D and E, supporting the latter when extended to sustain the bolster, substantially as set forth." Defendant's lounge was constructed and oper- ated precisely like that of complainant's, except that, instead of resting upon the head boards, the folding-rods rested upon the end pieces of the lounge frame. Complainant's improvement was not broadly new, and the defendant was held not to infringe. Ott v. Barth, 32 Fed. Rep. 89.— Blodgett, 1887. 586. For an example of a patent for vulcaniz- ing apparatus strictly construed in view of the prior art, and thereupon defendants' apparatus held not to infringe, see — . Stevens v. Ma- gowan etal, 81 Fed. Rep. 824.— Bradley, 1887. 587. Complainant's patent being for a process for producing slabs of celluloid, one step of which was to hold the celluloid firmly down upon a plate while drying, by grooves in the plate, and another step of which was applying dry heat first from below and afterward from above, defendants used in place of the first step an iron plate perforated by holes, with plugs of zylonite screwed into these holes, and applied tlie heat first from above and afterward from below ; they were held to infringe. Celluloid M'fg Co. V. Am. Zylonite Co. et al., 31 Fed. Rep. 904. — Gkat, 1887. 588. Where a patentee has clearly limited his patent to the use of a round rock -shaft, and the defendants use a square or polygonal one, de- fendants cannot be held to infringe. Toeplifer v. Ooetz et al., 31 Fed. Rep. 913.— Blodgett, 1887. 589. For an example of patents on machines for making horseshoe nails construed strictly, and thereupon defendants' machine held not to infringe, see — . Au Sable Horse Nail Co. v. New Haven Horse Nail Co. et al., 32 Fed. Rep. 92.— Blatchpord, 1887. 590. For an example of patent on a coffee roaster narrowly construed, and thereupon de- fendants held not to infringe, see — . Vernon v. Heberling et al., 31 Fed. Rep. 347. — Shiras, 1887. 591. The patent in suit was for a dentist's chair. The seven elements of the combination were old. The court said : " In such cases the doctrine of mechanical equivalents should be given a restricted operation, so as to confine the patentee, within reasonable limits, to the peculiar combination covered by his patent, and not to interfere with the rights of others.. Acting on this principle, the court finds that the bell-crank, and axis of the same, used by the defendants in the construction of barbers' chairs, is not the 182 CONSTRUCTIOIS' OF PATENT— SPECIFIC CASES. equivalent of the ' rock-shaft ' described in complainant's specifications ; that the spring- bolt employed by the defendants is not the equiv- alent of the ' toggle-arms ' shown in complain- ant's patent. The result of the finding is that the defendants have not infringed complainant's patent." Archer v. Arnd etal., 31 Fed. Rep. 475.— Thayer, 1887. 592. For an example of a patent on lifting jacks upheld, and defendants found to infringe, see — . Mosher v. Joyce et al., 31 Fed. Rep. 557. — Jackson, 1887. 598. The patent in suit was for an improve- ment in concrete pavements, and the claim in issue was : ' ' What I claim as new, and desire to secure by letters-patent, is [1] a concrete pave- ment, laid in detached blocks or sections, sub- stantially in the manner shown and described ; [2] the arrangement of tar paper or its equiva- lent between adjoining blocks of concrete, sub- stantially as and for the purpose set forth." After the issue of the patent there was formally disclaimed ' ' the formation of blocks from plas- tic material, without interposing anything be- tween their joints while in the process of forma- tion." Thereof the court said : ''There can be no infringement of this patent, in the construc- tion of a concrete pavement, unless it is made of detached blocks, formed on the ground, as laid down, with a water-tight joint between them, pi-oduced by the permanent interposition of tar paper or other suitable material between the blocks ; and no marking or cutting a pavement laid down as a whole or in large sections, al- though the same may be thereby separated into blocks with equally as satisfactory results, is the equivalent of such tar papei; so applied. ' ' ScMlKnger v. Middleton et al. , 31 Fed. Rep. 736. — Dbady, 1887. 594. The patents in suit were three in number, all pertaining to automatic fire extinguishers, and the claims, in issue of the first patent were : " [1] A nozzle for automatic fire extinguishers, constructed substantially as before set forth — namely, of a rose-head enclosing a valve con- trolling the water passage thereto, the stem of the valve projecting through a neck of said rose- head and being screwed to a cap secured to said neck by fusible metal. [2] The combina- tion, substantially as before set forth, of the water pipes, the automatic valve, and the fire- extinguishing liquid-containing reservoir con- nected with the water pipes as described, so that its contents will be discharged with and by the flow of the water." Tlie claim in issue of the second patent was : " A valve-releasing device, for automatic fire extinguisliers, consisting of wires C, lever H, and fusibly jointed slides I, combined to operate substantially as set forth." The claims of the third patent in issue were : "In an automatic fire extinguisher, the com- bination, substantially as set forth, of a perforated distributor, a valve located within said distrib- utor and having a stem which projects through the shell of the distributor, and a lever, as K^, to hold the valve to its seat within the distributor until its fusible joint, K, is released by heat. [5] ' In an automatic fire extinguisher, the combina- tion, substantially as specified, of a perforated distributor provided v?ith a valve, the stem of which projects through the distributor shell, with a jointed lever, K', and latch, K', secured thereto by fusible solder to hold the valve to its seat. [6] In an automatic fire extinguisher, the com- bination of a perforated distributor and a valve to control the supply of water to said distribu- tor, said valve provided with a two-part stem, and an elastic cushion between the parts to hold the valve to its seat, with an elastic pressure by fusible solder, substantially as specified. ' ' Com- plainant's improvement was a system of pipes ;/for the various rooms of a building, coming in through the ceilings, and fitted with a number of downward projecting nozzles, in the lower story and just above the supply valve of a pipe j leading from the street main up to the reservoir filled with some non-freezing and fire-extin- guishing liquid, which discharged upon the fire by force of the water from the main. Defend- ant's was a wet-pipe system. He had a reser- voir charged with a fire-extinguishing liquid, generating a gas producing a pressure, keeping the distributing pipes at all times filled with fluid ; he had also a connection with the street main, with the pressure of this reservoir which was cut off when the check valve was closed. Defendant was held not to infringe the first and second claims of the patent, but to infringe the third claim of the third patent. Barries v. RutJienburg, 32 Fed. Rep. 159.— Sage, 1887. 595. The patent in suit was for a rubber- bucket pump, and the claim in issue was : " The combination of the grooved screw-bolt or link A, the convex rubber D, and interior ex- panding washer C, substantially as set forth." Defendant was under injunction, and had made a rubber bucket with a solid screw-bolt. As the court was of the opinion that the claim might possibly be limited to a grooved screw-bolt, de- fendant was held not guilty of contempt. Tem- ple Pump Co. V. Goss Rubber Bucket M'fg Co., 31 Fed. Rep. 292.— Blodgett, 1887. 596. The patent in suit was for cutting files, and the claim in issue was : " In the arrange- CONSTRUCTION OF PATENT— SPECIFIC CASES. 183 ment of a guide set parallel to the carver, as hereinbefore described, and referred to in Fig- ures 1 and 3, drawing 3." In the machine of the patent the parallelism was brought about by proper grinding before the cutting tool was set into its holder. In defendant's machine the parallelism was brought about by adjusting the presser foot. Defendant held not to infringe. Wew Am. File Co. v. NieholaonFile Co., 31 Fed. Rep. 289.— Colt, 1887. 597. The patent in suit was for a sewing-ma- chine, and the claim in issue was : " The com- bination of the reciprocating bar G, with the side inclines 10 and 11, and upper inclines w, with feed-bar N, stop v, and adjustable stop t, arranged and operating as herein described, for the purpose set forth." The invention was not one of breadth. In defendants' machine two cams were arranged, one above the other, on a vertical rotating shaft, so arranged that one moved a shaft back and forth and the other from side to side ; at the end of this bar was a feed- bar which closely embraced the rod between two fixed jaws ; the bar had an adjustable fulcrum about midway between the driving end of the machine and the feed-bar. Defendants were held to infringe. Gray v. Bangs etal., 31 Fed. Rep. 843.— Colt, 1887. 598. The patent in suit was for collar buttons all in one piece ; defendants' buttons were not made in one piece, and defendants were held not to infringe. Gottle v. Erementz et al., 31 Fed. Rep. 42. -Wheeleb, 1887. 599. The patent in suit was for a machine for rolling saw logs, and the claim in issue was : " The toothed bar C, pivoted at its lower end and between the blocks E, which are adapted to slide in vertical grooves formed in posts D, whereby the said bar C is rendered vertically movable and capable of adjustment to suit logs of different sizes, substantially as herein set forth and shown. " The court held the invention to be a pioneer invention, and entitled to a liberal application of the doctrine of equivalents. De- fendant's machine used radius bars in place of cross-heads and guide posts, and was held to in- fringe. Torrant v. Duluth I/uniber Co., 30 Fed. Rep. 830.— Nelson, 1887. 600. The improvement in suit was for a cash and parcel railway for stores, and the claim in issue was : "In combination with the return track, a series of graduated stops, arranged in connection with the sales counters, substantially as described, so as to automatically arrest the cars or conveyors at the stations where they re- spectively belong." The apparatus had two single tracks operated by gravity ; the forward- ing track conveyed the cars from the counters to the cashier's desk, where the cars were sent back to the counters by means of a return track, on which there was a series of graduated stops con- sisting of quadrangular pieces of metal project- ing from the lower side of the rail. In defend- ants' apparatus there were two tracks one above the other ; each of these tracks had supported, below it, a continuously running cable, impelling the cash boxes, which were attached to the cable by spring-gripping jaws ; on the return track the boxes were thrown into the receptacles at their proper stations by a system of switching. Defendants were held not to infringe. Larmon Cash R. R. Co. v. Martin etal., 30 Fed. Rep. 824.— Colt, 1887. 601. The patent in suit was for an instrument for transmitting telegraph signals, and the claim in issue was : " The combination in a telegraph key of the lever, fulcrumed upon the torsional spring, with the adjusting screws H H, for regu- lating the amplitude of the lever movement and the retractile resistance of the torsional spring, substantially as described." Defendant con- tended that it did not infringe because " that the combination of the third claim is confined to a telegraph key, and by implication to a ' circuit- breaking lever ; ' and as they use the combination in a telegraph sounder, and not a key, they do not infringe. ' ' The court said : " In view of the clearly expressed intention of the patentee to in- clude other telegraph instruments, it must be held to include the lever of a sounder. Fairly construed, the claim should read, ' The combina- tion in a telegraph key or sounder, ' etc. To re- strict it to a key alone, as that word is known in telegraphy, would be most illiberal, and would unduly circumscribe the invention." Defendr ant was held to infringe. La Rue v. Western Electric Co., 31 Fed. Rep. 80.— Coxe, 1887. 603. The patent in suit was for an improve- ment in hollow tile floors, and the claim in issue was : " [2] The removable clay filling strips D, in combination with the hollow arched tiles A, and the double-flanged girders B, as herein set forth, for the purpose specified." In using the improvement covered by the claim in contro- versy, the defendant first placed the filling strip temporarily in position and then filled the whole joint between it, the girders, and the adjoining tiles with cement ; after being thus cemented, the filling strip is no longer removable. Held to infringe. Fryer v. Mutual Life Ins. Co., 30 , Fed. Rep. 787.— "Wallace, 1887. 603. The claim in issue was a combination claim, including as one element a certain " knife." The court construed this to miean a " tape wire 184 CONSTRUCTIOlSr OP PATENT— SPECIFIC CASES. knife" not used by the defendant, and held de- fendant not to infringe. Biiesh v. A. J. Medlar Co., 30 Fed. Rep. 619.— Butler, 1887. 604. The patent in suit was for corrugated metal shutters, and the claim in issue was : " [1] The application to corrugated metal revolv- ing shutters of one or more strips or lengths of soft and pliant material, disposed in such man- ner as to act as a cushion between the coils of the shutter, substantially as and for the purpose de- scribed." It was held that the claim was to be liberally construed, in view of the fact that the complainant was the first to enter this particular field of invention. Defendant used a rivet with a large head or shield designed to strengthen or protect the edge of the shutter. The stem of the rivet ran through the shutter and through a thick piece of leather made to fit the hollow part of the corrugation, the other edge being riveted against a metal washer on the top of the washer. These pieces of leather were placed upon the shutter in longitudinal lines, as in complainant's structure. Defendant was held to infringe. Clark v. Wil- soii, 30 Fed. Rep. 372.— Coxe, 1887. 605. The patent in suit was for a pump bucket, and the claim in issue was : " [1] The combination of the grooved screw-bolt or link A, the concavo-convex rubber B, and the interior expanding washer C, substantially as set forth." Defendant urged that under the patent in suit there must not only be a concavo-convex rubber, but it must have a drip hole near the perij)hery, and there must be a hole or holes through the washer to allow the escape of the drip water ; but the court did not accede to this construction. In some of defendant's buckets the bell-shaped rubber was so constructed that the washer might be screwed downward upon the link Instead of upward, for the purpose of expanding the periphery of the bucket ; and this was held to be a mere colorable change. Defendant also con- tended that its pump bucket did not infringe because its rubber was fastened to the neck of the link by projections entering the slot in the rubber, holding it from turning ; and because the interior of the washer was bevelled so that it could not turn by catching in the reel forks. The court held defendant to be an infringer. Temple Pump Co. v. Goss Pump & Rubber Bucket M'fg Co., 80 Fed. Rep. 440.— Blod- GETT, 1887. 606. The patent in suit was for an improved fabric for collars and cuffs, and the claim in is- sue was ; " A fabric for collars and cuffs, or other similar articles, having outer layers or sheets of celluloid, and an interlining of textile or fibrous material, substantially as and for the purpose specified. " The defendants took a fabric consist- ing of two sheets of cloth or muslin with a paper interlining, and placed a thin sheet of zylonite upon one side of this fabric ; and after the cloth edge of this sheet had been shaven off, the zylonite face was turned back upon itself so that there was a surface of zylonite at all edges of the collar except at the neck band. Defendants were held to infringe. Celluloid M'fg Co. v. Am. Zylonite Co. etal., 30 Fed. Rep. 437.— Ship- man, 1887. 607. The patent in suit was for a fare register, and the combination included the dovetailed end indicating any failure to reset the trip-hand of the register at zero at the commencement of the trip ; the tell-tale hand of the patent was moved with the trip-hand in resetting, and if re- set at zero moved with it in registering fares until again reset ; if then not reset at zero, the tell-tale hand remained at the place at which re- set, when the trip-hand moved forward in reg- istering fares, indicating that the registration was begun at a wrong place. In defendant's device the trip-hand was reset by moving it for- ward, and it had a stop by which it could not move the trip-hand beyond zero. If it was stopped short of zero, it could be moved back to zero when the trip-hand had proceeded to that point in registration or beyond, and if it were stopped at zero it could be moved back from that point at any time and forward to it again without interfering with the trip-hand in I registration. Defendant was held not to infringe. I Railway Register M'fg Co. v. Broadway & Sev- \enth Ave. R. B. Co., 30 Fed. Rep. 238.— Wheeler, 1887. 608. The patent in suit was for an improve- i ment in wagon gear, and the claim in issue was : " In a wagon gear, the combination, with the wagon-box A, transverse spring K, and side spring M, of the rocking rod or equalizer N, provided with the forked end n, and bolts h, sub- stantially as herein shown and described, where- by the wagon gear is made more elastic, as set forth." In the wagon gear of complainant's patent the ears to which the ends of the side springs were fastened swung below the axis of the equalizer, whereas in defendant's wagon gear the equalizer was not brought as close to the wagon body, and the ears swung above the axis of the equalizer. Defendant was held to in- fringe. Sliaver v. Skinner M'fg Co., SO Fed. Rep. 68.— Shiras, 1887. 609. The patent in suit was for a bustle. Defendant's bustle was for all practical pur- poses the same as that of complainant's patent, except that it was of braided rattan instead of CONTEMPT OF COUET. 185 braided wire. But complainant's patent was limited in terms to a bustle of wire. The court held that the doctrine of equivalents could not be invoked, and that there was no infringement. Western A Wells M'fg Go. v. Sosemtock, 30 Fed. Rep. 67.— Wallace, 1887. 'ilO. Complainant's patent in suit was for pro- ducing a bronze-like surface on iron ; it con- sisted in coating the iron with a thin film of oil and oxidizing it by high heat. The claim was to " the process of ornamenting iron in imita- tion of bronze by the application of oil and heat, substantially as described." Respondent first oxidized the surface of the iron and then baked on a coat of copal varnish. Respondent was held not to infringe. Plummer v. Sargent, 130 U. S. 443.— Sttp. Ct. 1887. 611. For an example of a patent on shoe- buckles construed upon a motion for a provis- ional injunction, and thereupon defendants held not to infringe, see — . Thompson et al. v. Smith & Griggs M'fg Co. et al., 33 Fed. Rep. 791.— Shipman, 1887. 613. For an example of patents on paper -bag machines construed, and thereupon respondents found not to infringe, see — . Eastern Paper- Bag Go. et al. v. Union Paper-Bag Go. et al., 39 Fed. Rep. 787.— Colt, 1887. 613. The patent in suit was for an improve- ment in chain-links and chains ; the special utility of the link consisted in its adaption to sprocliet-chains. The distinguishing feature of the improvement was an open link, permitting the under bar of another link to enter the throat when the links were placed face to face, and with such arrangement of parts, that when the links were turned into working position, the end-bar could not back out from its engagement. The claim was : "(1) A chain-link, having its end- bars eccentric to the side-bars reversely to each other, one of said end-bars being provided with a hook, substantially as and for the purpose specified." This inventor was not the first to make a removable link for a drive-chain. De- fendants' chain had a bulge upon the side and end-bars, keeping the end-bar from backing out, and defendants were held to infringe. Ewart M'fg Co. V. Moline Malleable Iron Go. et al., 30 Fed. Rep. 873.— Blodsett, 1887. CONTEMPT OF COURT. Cases. 1. For a statement of the mode of procedure in contempt-of -court proceedings, see — . Pa/rk- hurst Y. Kinsman et al., 3 Blatch. 76. — Betts, 1848. 3. If an injunction is too broad in its terms, defendants should, when served with it, imme- diately take measures to have it set aside for that reason, for such a reason will not avail in an at- tachment proceeding. Sickles v. Borden et al., 4 Blatchford 14.— Hall, 1857. 3. An injunction may properly be served on the engineer of a steamboat using the patented cut-off which is the subject of the patent ; and the engineer may be held to be in contempt of court if the use of the cut-off is continued. — lb. 4. The service of a copy of the order of the court granting an injunction is not the service of the injunction, and will not hold as such in contempt proceedings. Whipple v. Hutchinson, 4 Blatch. 190.— Nelson, 1858. 5. Where a party has been enjoined from in- fringing a patent and then proceeds to repeat the offensive act, claiming to act as agent for an- other, he commits a contempt of court. For a second offence defendant was fined four hun- dred dollars and costs, and ordered to stand com- mitted until fines and costs were paid. Potter et al. V. Muller, 1 Bond, 601. — Leavitt, 1865. 6. " A defendant is not permitted to avoid a decree against him by making some slight changes in the article, and then boldly asserting that the new article is materially different from the one already passed upon and is no infringe- ment." Liddle v. Gory et al., 7 Blatch. 1. — Benedict, 1865. 7. Where, in contempt proceedings, the de- fendants' device raises a really new question of infringement, attachment will not issue, for such question must be decided in a new suit. — lb. 8. A person had been adjudged guilty of con- tempt of court, and thereunder had suffered im- prisonment for fifty days. He was without means and had a family dependent upon him. Thereupon the court released him upon his own recognizance in the sum of two thousand dol- lars. Goodyear et al. v. MuUee et al., 5 Blatch. 463.— Blatchfoed, 1867. 9. The defendant, having been previously en- joined, afterward engaged as a workman for wages ; and, under legal advice that he might, fitted up machinery and kept it in running order in a factory where he knew the patent was being infringed. He was held to be an infringer. Goodyear et.al. v. Mullee et al, 5 Blatch. 439.— Blatchford, 1867. 10. Advice of counsel to the effect that certain changes take defendants' device outside of the patent will not prevent attachment for contempt 186 CONTEMPT OP COURT. of court. Hamilton v. Simonds et al., 5 Bissell, 77.— Dhummond, 1869. 11. Where complainants have been put to great expense in securing a conviction against defend- ants for contempt of court, the court may and will tine the defendants heavily, and award the same to complainants. Doubleday et al. v. Sher- man et al., 8 Blatch. 45.— Blatchpord, 1870. 13. A person -was enjoined from infringement of a patent. He took the improved patented part out of his old machine and put it into a nevr one and sold it. He was held to be in contempt of court. Craig et al. v. Fisher, 3 Sawyer, 345. -Sawyer, 1873. 13. "Not only has a party, in whose favor judicial process has been awarded, a right to de- mand the full measure of protection it was in- tended to afford him, but, in a more general .sense, it is essential to the due administration of justice that obedience to it should be enforced. If its requirements are wilfully unheeded, a sum- mary method of correction is imperative ; on the other hand, if the delinquency, either as to its character or the fact of its commission, is doubt- ful upon the proofs, such mode of interposition ought not to be applied. This is the import of all the authorities, It is not enough, therefore, to arrest a summary exercise of the power of the court, that the proofs of the violation of'its de- cree are contlicting, or that the thing used by the respondent is, in some of its features, differ- ent from tlie thing whose use is interdicted. The evidence must be carefully weighed, and, as it establishes clearly or falls short of establish- ing a substantial transgression, it is the duty of the court to act, or forbear to act, accordingly. " Wetherill et al. v. New Jersey Zinc Go. , 1 Ban- ning & Arden, 106.— McKennan, 1874. 14. A defendant corporation violated an in- junction against infringing a patent. A bailable attachment was awarded against the president of the defendant company. — lb. 15. A patent suit was before a master in chancery on an accounting in damages and profits. Complainant moved for an attachment against the defendants for violation of the in- junction. The question at issue was whether an article made by the defendants was within the interlocutory decree of the court. The court refused the attachment, and ordered the master to make up a special account as to the disputed article. WelliTigY. Rubber- Coated Harness Trim- ming Co. et al., 3 Banning & Arden,. 1. — Nixon, 1875. 16. "Where adefendant under an injunction has infringed again, acting under competent advice, and with no intention of violating the injunc- tion, a fine will not be imposed, but he may be ordered to pay the cost of the application for the attachment and of the atfidavits. Carsteadt v. United States Corset Co., 13 Blatch. 371.— Ship- man, 1876. 17. Where, on a motion for attachment for contempt of court, the defendants are working under the sanction of letters-patent, their device must be presumed to be patentably different from that covered by complainant's patent ; and a strong and obvious case of infringement, be- yond all question of mere colorable difference, would be necessary to make it proper for the court to consider defendants' instruments as covered by a decree in another suit. Buerk v. Imhaeuser et al., 3 Banning & Arden, 465. — Johnson, 1876. 18. Defendants being under an injunction not to infringe, sent six of the patented articles to another party before examination of the decree, but afterward had the sale rescinded and took the articles back. This was held to be a mere technical violation of the injunction, and defend- ants were punished by a fine of fifty dollars, to cover the cost and expenses of complainant in contempt proceedings. — lb. 19. Complainant's patent in suit was for a time-detector. Previous to injunction decree, de- fendants had sold some time-detectors, and after- ward furnished paper dials therefor. These time-detectors were included in the accounting. The subsequent furnishing of the paper dials was held not to be a new infringement. — lb. 30. In a motion for an attachment for con- tempt of court, it was understood by both parties that the object was not to mulct defendant in damages, but to obtain a decision in regard to the scope of the patent. Under these circum- stances, the motion being granted, there was im- posed a nominal fine of fifty dollars in addition to a sum equal to the fees of the master, as par- tial indemnity for expenses. Schillinger v. Ounther, 14 Blatch. 153.— Shipman, 1877. 31. It is a rule governing courts of equity ■ "that they will never attach a defendant for contempt where the violation of the injunction is not plain, and proved to the satisfaction of the court." Birdsall v. Hagerstovm Agricul- tural Implement M'fg Co., 1 Hughes, 59.— Bond & Giles, 1877. m. On motion for attachment for contempt of court, in violating a provisional injunction, re- spondent is not entitled to claim in defence that the patent was invalid or the injunction im- providently granted. Phillips et al. v. City of Detroit, 3 Flippin, 93. -Brown, 1877. 88. Where the violation of an injunction CONTEMPT OP COURT. 187 against infringing a patent by a board of public works, though intentional, -was not wilful, in any odious acceptation of the term, where the com- plainants would derive no benefit from the imme- diate payment of their royalty, and the city was \ \ responsible, and where, if the defendant made the payment, it miglit not be reimbursed by the city, defendant was not required to pay complainants' royalty, but instead was required to pay a fine of fifty dollars, together with th3 C33t5 of ths motion and counsel fee of fifty dollars, and to stand committed till the terms of the order were complied with. — lb. 24. " Ordinarily, parties against whom pro- ceedings for contempt in violating an injunction are pending, will not be heard upon other pro- ceedings to affect the injunction until they have cleared themselves from, or purged themselves of , the contempt. " Heady Hoofing Company et al. V. Taylor et al., 15 Blatch. 94. — Wheblbr, 1878. 35. Where the violation of an injunction of a court does not appear to be wilful disregard of the order of the court, the punishment may be the payment of the damages and the cost of the proceedings. — lb. 26. The scope of an injunction is according to the construction given to the patent by the court, and no testimony is proper or of any effect to vary that construction in contempt proceed- ings. Burdett \. Estey et al., 16 Blatch. 105. — Wheeler, 1879. 27. A decision upon a question of infringe- ment, made in contempt proceedings, is not re- viewable as far as those proceedings are con- cerned. — lb. 38. Complainant's patent for a lemon-squeezer covered a combination of old elements, one of which was a perforated bed for the lemons to rest on, the juice escaping through the perfora- tions. He obtained a temporary injunction against defendant. Defendant then made a lemon-squeezer which had a coiTugated bed for the lemons to rest on, and subsequently procured a patent for such construction. Held, on motion for attachment for contempt, that the question whether tlie latter construction was a mere col- orable evasion could not be settled therein. Onderdonk v. Fanning, 2 Fed. Rep. 568.— Benedict, 1880. 39. Meddling with property attached by the marshal — under order of a United States court — by 'notice only, unaccompanied by possession, is not contempt of court. Steam, Stone Cutter Co. V. Windsor M'fg Co. et al., 18 Blatch. 391. —Wheeler, 1880. 30. Complainant had a patent for a process of producing bronze color on iron, and for the product, the process being to clean the casting from sand and scale, then coat it with oil or oil varnish, and subject to high heat. In a prior suit, on the merits, complainant had not claimed that his patent covered the case -where the iron and oil were not both oxidized. Defendants made articles by first oxidizing the iron, then varnishing and heating to a less degree than would oxidize the varnish. A provisional in- junction had been granted in the present suit. Motion for attachment for contempt of court in violating the injunction denied. Tueker v. Bur- ditt et al., 5 Fed. Rep. 808.— Lowell. 1880. Tucker v. CorUn et al., 5 Fed. Rep. 810. — Ship- man, 1880. 31. For a recital of protracted contempt pro- ceedings, and the judgment of the court thereon, see — . Fischer v. Hayes, 19 Blatch. 13.— Blatchpord, 1881. 33. ' ' Contempt of court is a specific criminal offence, and . , the imposition of a fine for a contempt is a judgment in a criminal case." " The order imposing the fine for the contempt" is " a final order or judgment as to the matter of the contempt." — lb. 33. Courts have the power to order a person fined for contempt of court to be committed till the fine is paid. — lb. 34. Defendants having violated an injunction, .believing, in good faith, that they had not done so, the rule for attachment was not granted, but I they were made to pay the costs of the rule and I proceedings. Strdbridge v. Lindsay et al., 6 I Fed. Rep, 510.— Acheson, 1881. j 35. The defendant having been ordered to pay ; a fine for cqntempt of court (for infringement of I patent in defiance of injunction) and ordered to ] stand committed till the fine was paid, he was i allowed to file a bond for security for payment I of the fine (with a view to an appeal to the Su- i preme Court from the final decree), and the exe- j cution of the warrant for commitment was sus- pended until the furtlier order of the court. Fischer y. Hayes, 19 Blatch, 184.— Blatchpord, 1881. 36. A corporation having violated an injunc- tion by the act of its president, through errone- ous advice, the company was fined, but the president was not personally punished, Macauley V, White Sewing Machine Co, et al., 9 Fed. Rep. 698,— Blatchpord, 1881. 37. It seems that merely advertising for sale patented machines after injunction served, without actual sales, is not contempt of court. Allis V. Stowell, 19 O. G. 737.— Dyer, 1881. 38. " In proceedings for an alleged wilful con- 188 CONTEMPT OF COURT. tempt, whicli are proceedings of a quasi criminal character, a clear case must be made in order to warrant the court in exercising its power in the way of summary punishment. The case should j he one that admits of no substantial doubt in the mind of the court that the party has intentionally disobeyed the injunction. " — lb. 39. After injunction served, some of the pat- ented machines which respondent had previously sold were returned, and he disposed of them again, supposing he had that right, for the rea- son that the previous sale would be included in the accounting. The court held this to be a technical violation of the injunction and awarded costs to the complainant. — lb. 40. After an injunction was served, the de- fendants sent certain of the patented machines to the care of their agent in ti different State, but it did not appear that the machines had gone out of the custody of such agent. Defendants were held not to be in contempt of court. Mc- Kay et al. V. Scott Sole Machine Go. et al. , 20 O. G. 373.— Blatchfoed, 1881. 41. The patented material was nitro-glycerine mechanically mixed with an absorbent which rendered it safer to transport, etc. Defendants used nitrated sugar (apparently used for that purpose before) to accomplish the same purpose. Defendants held to infringe m violation of an injunction ; and the fact that they were ad- vised that they were not infringing did not save them from contempt. ' ' Any question of animus can bear only on the extent of the punishment. ' ' Atlantic Giant Powder Co. v. Dittmer Powder M'fg C°. et al.,9 Fed. Rep. 316. — Blatchpord, 1881. 43. Where, in a motion for attachment for contempt of court, there is much doubt on the question of infringement, the court will require the new apparatus to be embraced in a new suit and deny the motion. Bate Befrig. Co. v. East- man, 11 Fed. Rep. 903.— Blatchpord, 1881. 43. By the court : " The act does not appear to have been at all wilful or defiant, but merely the exercise of a supposed right under advice taken and given in good faith, and is not con- sidered to deserve punishment as such, '•' Mat- iheios V. Spaugenberg, 15 Fed. Rep. 818. — Wheblbr, 1883. 44. Motions for attachment for contempt of court, by reason of the violation of an injunc- tion, are not granted unless the violation of the injunction is plain and free from doubt. Smith V. Halkyard et al., 26. O. G. 1030.— Colt, 1884. 45. "The process of contempt has two dis- tinct functions — one criminal, to punish dis- obedience, the other civil and remedial, to en- force a decree of the court and indemnify private persons. In patent causes it has been usual to combine the two, and to order punishment if it is thought proper, or indemnity to the plaintiff if that is all that justice requires, or both;" Hendryx et al. v. Mtzpatrick, 19 Fed. Rep. 810. — Lowell, 1884. 46. " The courts have power to punish for contempt (Section 175), but all forms and modes of proceeding which are usual in equity may be followed in cases in equity." — lb. 47. " If the proceedings should be criminal in form it would make no difference. A criminal sentence for the benefit of a private person is to be treated as civ^il, to all intents and purposes." —lb. 48. Although a court has not a general dis- cretion to annul orders passed for the benefit of a party to the suit, still, where inability is shown to comply with the order, as for instance, if the decree requires an act to be done, or poverty, if the decree is for payment of money, it is accord- ing to the course of courts to discharge the ini: prisonment of which the end is proved to be un- attainable. — lb. 49. After defendants have been found to be infringers, they may continue the use of the in- fringing machines provided they so change them that they are not covered by the complainant's patent as construed by the court. N. T. Orape Sugar Co. v. Buffalo Orape Sugar Co. et al. , 33 Blatch. 183.— Shipman, 1884. 50. Where, after injunction granted, defend- " ant makes a change which raises a real question ' as to whether the change is a violation of the in- junction and an infringement of the patent, the bringing of a new suit is the proper course. ' ' Process of contempt is a severe remedy, and should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendant's conduct. " Gal. Art. Stone Paving Go. V. Molitor, 31 O. G. 1044.— Sup. Ct. 1885. 51. Where affidavits offered by defendants raise doubt as to the violation of an Injunction, a motion for commitment for contempt of court will be refused, as the contempt " ought to be shown by clear proof." Celluloid M'fg Co. ct al. V. Chrolithion Collar & Guff Go. et al., 24 Fed. Rep. 275.— Wheeler, 1885. 53. Application was made to a court for at- tachment for contempt against Vernon H. Brown, individually, and as a member of a firm repre- sented as general agents in the United States for the Cunard Steamship Co. . It did not appear that Vernon H. Brown had control over the cargoes of the steamers of said company, and the CONTEMPT OP OOUET. 189 motion was refused. Bate Befngerating Co. v. Gillettetal., 33 0. G 1466.— Nixon, 1885. 53. " The sole power of the federal courts to punish for contempts of authority both at law and in equity is derived from Section 735 of the Revised Statutes." "Congress having legis- lated upon the subject of contempts, and the federal courts having derived tlie same power to punish for contempts from the act of Congress (Rev. St. Sec. 735), it follows irresistibly that the state court practice in such cases cannot be fol- lowed. " "A contempt proceeding in the fed- eral court is in its nature criminal, and must be governed by the rules of construction applied in criminal cases. " " That court alone in which a contempt is committed, or whose order or au- thority is defied, has power to punish it, or to en- tertain proceedings to that end." Where con- tempt proceedings are pending in a state court at the time of the removal of the case to a federal court, the latter court cannot proceed with the contempt proceedings. Kirk et al. v. Milwaukee Dust-Oollector M'fg Co., 36 Fed. Rep. 501.— Dyer, 1885. 54. Where there is doubt whether the acts complained of have actually been committed — on motion for attachment for contempt — the doubt will be resolved in favor of the defendant. Celluloid M'fg Co. et al. v. ChrolWhion Collar & Guff Co., 24 Fed. Rep. 585.— Wallace, 1885. 55. Where a provisional injunction has been issued, conditioned that complainant is to file a bond, respondent cannot avoid the consequences of violating injunction because he was not noti- fied that the bond had been filed, for it was his duty to ascertain that fact from the court. Nor in such a case can respondent defend on the ground that what he was enjoined against was not an infringement ; in such a case respondent was ordered to pay a fine of five hundred dollars, and the costs of the motion, including fifty dol- lars to complainant's solicitor, and to be arrested and committed to jail unless the fine and costs were paid within ten days. Burr v. Kimbark, 39 Fed. Rep. 428.— Blodgett, 1887. 56. The procurement of new defence, new evi- dence, or the advice of counsel, will not justify the violation of an injunction by defendants. " They are bound to obey the injunction until it has been dissolved or modified ; and they cannot be allowed to assume the provence of the court in determining whether it is right or wrong." Bate Befrigerating Co. v. Oillett et al, 30 Fed. Rep. 683.— Wales, 1887. 57. Defendants, being under an injunction against the infringement of a patent, contributed to a common fund with others to further defend against the same patent in other cases. This was held to be a contempt of court, but as de- fendants disclaimed any intention of violating the injunction, the court imposed a nominal fee (ten dollars) on each of the defendants. — lb. 58. " On hearing a motion for contempt, the first inquiry always is. Do the acts complained of constitute a violation of the injunction ? The motives which impelled the acts, honest miscon- ceptions of right to do them, or the erroneous advice of counsel, and all other excuses, may be properly considered only in awarding the pun- ishment, where the violation is clear and with- out doubt. It is needless to remark on the im- portance of exacting implicit obedience to the order of the court having jurisdiction of the subject-matter in dispute. Any relaxation of, or deviation from, the established practice of enforcing a compliance with such order, in its spirit and letter, would not only produce con- fusion and endless litigation, but would impair the authority and dignity of the court ; and it is for these reasons, as well as to maintain the rights of the prevailing suitor, that enjoined parties are liable to punishment even when they have innocently or mistakenly violated an in- junction. " — lb. 59. " An attachment for contempt is a sum- mary proceeding, and the writ is granted only in cases which are free from any reasonable doubt on the law or the facts." Bate Refrigerating Co. V. Oillett et al., 30 Fed. Rep. 685.— Wales, 1887. 60. Where, in contempt proceedings, it ap- pears that defendant acted in good faith, under the belief that he had a right to do the acts com- plained of, and stopped the infringing manufac- ture as soon as the proceedings were begun, he is not guilty of wilful contempt of court and may be discharged upon payment of costs. Iowa Barbed Steel Wire Co. v. Southern Barbed Wire Co., 30 Fed. Rep. 615.— Thaybk, 1887. 61. Defendant had been enjoined against the infringement of a patent. He then made a different article and procured a patent for it. In contempt proceedings it was held that he was entitled to have the question determined on a motion for an injunction. Wirt v. Brown, 30 Fed. Rep. 187.— Benedict, 1887. 63. In a suit for an infringement of a patent a corporation audits managing officers were made parties defendant to the bill, and they so an- swered. Injunction was granted. The manag- ing officers continued the manufacture and were held to' be infringers. Iowa Barbed Steel Wire Co. V. Southern Barbed Wire Co. et al, 30 Fed. Rep. 133.— Thatek, 1887. 190 CONTRACT NATURE OF PATENT. CONTRACT NATURE OF PATENT. of U. 8. Sec. 8. The Congress shall have power * * to promote the progress of science and the use- ful arts by securing for limited times to authors and inventors the exclusive right to their respec- tive writings and discoveries. Cases. 1. " The grant of an exclusive privilege to an invention for a limited time" does not imply " a binding and irrevocable contract with the peo- ple, that at the expiration of the period the in- vention shall become public property. " Evans V. Eaton, 1 Peters' C. C. 322.— Wash. 1816. 2. " The law confers an exclusive patent right on the inventor . . as an encouragement and reward for his ingenuity, and for the expense and labor attending his invention. ' ' Lowell v. Lewis, 1 Mason, 182.— Stokt, 1817. 3. The patent law holds out a reward to in- ventors, in order to promote the progress of .science and the useful arts. Fennock et al. v. Dialogue, 2 Peters, 1.— Sup. Ct. 1829. 4. It is not the object of the law to reward those least prompt to communicate their dis- coveries. — lb. 5. If through a subsequent inventor the in- vention comes into common use, there would be no quid pro quo, no price for the monopoly. — lb. 6. "A patent is a bargain with the public, in which the same rules of good faith prevail as in other contracts, and if the disclosure communi- cates the invention to the public, the statute is satisfied." Whitney et al. v. Emmett et al., 1 Bald. 303.— HoPKiNSON & Baldwin, 1831. 7. The patent "is the reward stipulated for the advantages derived by the public for the exertion of the individual." The contract ought to be fairly executed on the part of the United States. Grant et al. v. Sayrrumd et al. , 6 Peters, 218.— Stjp. Ct. 1882. 8. For a valuable invention the public gives, for a limited period, the profits arising from the sale of the thing invented. Shaw v. Cooper, 7 Peters, 292. -Sdp. Ct. 1888. 9. The exclusive right does not rest on the discovery alone, but also on the legal sanctions and forms of law. — lb. 10. Patents are treated as a just rewaj'd to in- genious men ; as holding out encouragements to genius, talents, and enterprise ; as highly bene- ficial to the public ; as ultimately securing great advantages to the whole community, and are to be liberally construed. Blanchard v. Sprotgue, 2 Story, 164.— Story, 1839. 11. " The bargain by government is to give the inventor the exclusive use for fourteen years, if he will place on record, and distinguish clearly and truly what his novelty or improvement is, so that the public can easily understand it, and benefit by it after the fourteen years if not be- fore." Hovey\. Stevens, 3 Woodbury & Minot, 17.— WoODBtJRT, 1846. 12. " The inventor is not to be protected un- less he describes plainly and fully what he has done, so that the public may copy or imitate and use it after his term expires. That is the con- sideration for the exclusive use during the period of the patent."— /S. 18. "The contract of the public is not with him who has discovered, but with him who also makes his discovery usefully known. ' ' — lb. 14. " The patent law goes indisputably upon the ground that when a ma,n, by his knowledge and skill, has made and perfected a machine, the public are then put in possession of the in- vention, and have the benefit, in some form, of that knowledge and skill ; and that the man who comes afterward cannot deprive the public of that benefit, though he maybe an original in- ventor of the machine. He has not given tht; consideration for an exclusive privilege, because the public had it before ; and although he may have the merit of invention, he cannot have the right to take from the community that which they iDossess by the invention of another. ' ' Howe et al. V. Underwood et al., 1 Fish. P. C. 160. — Spragde, 1854. 15. " The undertaking on one part is in con- sideration of a valuable invention to be given up for the benefit of the public by the inventor after a reasonable term of the exclusive use of the fruits of the invention to be secured to him. His faith is pledged that it is a thing not known before ; that there has been no unnecessary de- lay in the application for a patent ; that it has not been unnecessarily exposed to public view ; that the manufacture, machine or invention has not been made, or sold, or offered for sale to others, or permitted or suffered without opposi- tion, if known." HuntY. Howe, 1 MacArthur's P. C. 866.— MoRSEi,L, 1855. 16. " Patents are granted to inventors, not for their benefit simply, but for the purpose of . benefiting the public by encouraging inventors to make inventions which ■ may be useful to the public when placed at their disposal, and to place upon the records of the Patent Office a de- scription of those inventions, so that after the expiration of the term limited by their patent, CONTEACT NATURE OF PATENT. 191 the public may have the full advantage of their genius and discoveries." Ransom et al. v. New York, 1 Fish. P. C. 353.— Hall, 1856. 17. " When the patent is granted, it hecomes, to a certain extent, a contract upon the part of the Government with the party named in the patent, that it will, through the courts, and in the ordinary courses of the administration of justice, protect him in the exercise of the ex- clusive privilege which his patent gives to him ; and there could be no justice in granting to a 1 party an exclusive privilege to use what he did ; not invent, or to use, exclusively, for fourteen ! years, what had been already invented by an- ! other, because he has paid no consideration for ! the grant, no consideration for the promise of : the Government to secure him in the exercise of ', these privileges, if he has not, by his invention, I and by placing a description of it upon the j records of the Patent Office, added. to the stock j of useful knowledge which may be applied for the benefit of the citizen." — lb. 18. " As the patent law of the United States grants the patentee a monopoly, and not only awards damages, but inflicts a penalty for a vio- lation of the exclusive privilege, it requires that the invention shall be so described in the specifi- cations that one acquainted with the art of manufacture to which it relates maj^ not only understand the invention, but be able by fol- lowing the specifications with the aid of the drawings, to construct the machine or make the combination which is th^ subject of the patent. And this rule of law is founded on the equitable principle that a monopoly or exclusive privilege should not be given to an individual without a just equivalent to the public. While the statute holds out encouragements to stimulate inven- tions and improvements in the arts and manu- factures by securing to the inventor a remunera- tion for his outlay, and a reward for his ingenu- ity, nevertheless, the consideration for which the patent issues to him is the benefit he con- fers on the community by his discovery eventu- ally becoming public property. The patentee may be regarded as a purchaser from the pub- lic, being bound to so communicate his secret by specifications, drawings, and models, that it shall be successfully available to the whole communi- ty at the expiration of the patent." Wintermute V. Bedington, 1 Fish. P. C. 339.— Wilson, 1856. 19. A patent " is dealt with by the courts as a grant by the Legislature in exchange for the equivalent to be received by the public in the free enjoyment of the patented discovery after the inventor's exclusive privilege expires. " Carr V, Bice, 1 Fish. P. C. 198.— Betts, 1856. 30. "The patent grant is bestowed in con- sideration of something new and valuable con- tributed by the patentees to the public benefit. If the subject of the grant was already open to common use' ' the patentees render ' ' no equiva- lent for the privileges they obtain, and fail to fulfil the vital condition upon which they were authorized to enjoy them." — lb. 31. " The patent may be considered in the light of a deed from the Government, the con- sideration of which is the invention specified ; and the patentee is bound to communicate it by so full, clear, and exact a description with the drawings and models, that it shall be within the comprehension of the public at the expiration of the patent, for at that period his invention be- comes public property. The exclusive privilege is not conferred merely as a reward of genius, and for the encouragement of useful inventions and improvements in arts and manufactures, but also embraces the public benefit." Page v. Ferry, 1 Fish. P. C. 398.— Wilkins, 1857. 33 " The consideration given for the mo- nopoly is that the public shall have the full and free benefit and knowledge of the invention at the expiration of fourteen years from the date ; of the invention. ' ' Savary et al. v. Laufli, 1 : MacArthur's P. C. 691.— Morsell, 1859. : 33. " The public, who through the law se- j cures to the inventor the exclusive property in i his invention for a limited period, receives in re- turn either new or more valuable or cheaper productions during the lifetime of the patent, i and from its expiration the free enjoyment of j any benefits which may flow from it forever i thereafter." Magic Ruffle Co. v. Douglas et al., 3 Fish. P. C. 330.— Shipman, 1863. 34. A reissued patent is a new contract made with the Government. Ooodyear et al. v. Prom- denee Rubber Go. et a?., 3 Clifford, 351.— Glif- FOBD, 1864. 35. "In consideration that an inventor will disclose the secret of his invention, and put it in immediate practice, and afford to the public the I opportunity to practice it when it becomes pub- j lie property at the expiration of the term of the I patent, the Government grants to the author of i a new and useful invention the exclusive right I in that invention for a term of years. This grant is not the exercise of any prerogative to confer upon one or more of the subjectsof a government the exclusive property in that which would otherwise belong to the common right. It more clearly resembles a contract which, under the authority conferred by the Constitution, Congress authorizes to be entered between the Government and the inventor, securing to him. 193 CORPOEATION. for a limited time, the exclusive enjoyment of the practice of his invention in consideration of the disclosure of his secret to the public, and his relinquishment of his invention to the public at the end of the term." Attorney -General v. Eumford Utemical Works et al., 3 Banning & Arden, 398.-Sheplbt, 1876. 26. "On one side is a special grant made by the Government to the inventor, that he shall have the exclusive use of his invention foi a certain time ; and there is, on the other hand, a consideration given for it by the inventor ; that is to say, the disclosure of his invention, so that the public may afterward have the benefit of it. " Boyer et al. v. Coupe, 39 Fed. Rep. 358.— Cab- PENTEB, 1886. CORPORATION. Casbs. ' 1. Action for infringement will lie against a corporation. Kneass v. Bchuyllcill Bank, 4 Wash. 9.— Wash. 1820. 2. A railroad, upon which a patent was in- fringed, was held by a corporation chartered by the State of Pennsylvania, but the road was oper- ated by a Maryland corporation. The Pennsyl- vania road was held liable for infringement. 7b?* & Maryland Line Sailroad Co. v. Winans, 17 Howard, 30.— Sup. Ct. 1854. 3. "A corporation is an artificial being, in- visible, intangible, and existing only in contem- plation of law. The only mode to give notice, or to communicate knowledge to such artificial being, invisible and intangible, is to give such notice, and to communicate such knowledge to some agent authorized to receive it. Corpora- tions know nothing except through agents. They act by agents. They receive notice through agents. The neglect of agents is their neglect. The directors are no more the corpora- tion than the treasurer is. They are merely the agents of the corporation when assembled for the transaction of business." New England GoA-Spring Co. v. Union India Rubber Co. etal., 4 Blatch. 1.— Ingbrsoll, 1857. 4. "Corporations as well as individuals can be estopped from denying that they have done certain acts when they had the corporate power to do such acts. They have the power to waive rights and conditions in their favor, to transfer rights and privileges, and to assent to such trans- fer by others, and, therefore, they can be estop- ped from saying that they have not so done." — lb. 5. A Massachusetts corporation brought suit on its patent in the Southern District of New York. Respondents contended that the Massa- chusetts corporation was confined to the limits of that state ; the court held otherwise. Orover & Baker Sewing Machine Co. v. Bloat et al., 2 Fish. P. C. 112.— Nelson, 1860. 6. Where a joint-stock corporation has com- plied in form with the requirements of the statute, and the authorities of the state have not called the validity of the organization in question, " it cannot be admitted that a mere wrong-doer can set up such a defect, if it be one, as a justifica- tion of his wrongful acts." Dental Vulcanite Co. V. Wetherbee, 2 Clifford, 555.— Clifpord, 1866. 7. The defence that a complainant is not really the joint-stock corporation that it claims to be, must be pleaded in abatement, for it cannot be pleaded in bar, nor given in evidence under the general issue. — lb. 8. " Corporations may have the same reme- dies at law or in equity as natural persons, and the rule established by the Supreme Court is, that if the defendant pleaded the general issue in a suit brought by a corporation, it is an ad- mission of the corporate existence of the plain- tiff, and dispenses with the necessity of any proof on its part to sustain that allegation." —lb. ■ 9. Where the owner of a patent, and the in- jured licensee, a corporation, join as complain- ants, the bill may be verified by the oath of the president of the corporation. Ooodyear et al. v. , Allyn et al., 6 Blatch. 33. — Blatchford, 1868. 10. Where a municipal authority orders a cer- tain patented improvement to be employed in a public work, that authority must be assumed to have acted with knowledge of the patent. (rreaiorev.Gri^n, 4 Abbott's Practice, N. S. 310. — Gilbert, 1868. 11. A suit in equity was brought against one Osgood and others, in the Southern District of New York. Osgood was simply president and director of a New Jersey corporation which actually committed the alleged infringing acts. The court held that in order to make Osgood properly a defendant, complainant should have sworn either that he could control the operations of the company, or, at least, have joined with him a majority of the directors. Jones v. Osgood et al. , 6 Blatch. 435. — Blatch- ford, 1869. 13. The contract of license of a corporation may be valid without any authorized resolution or order in writing by the trustees or directors, and although the seal used on it was the private seal of one of its officers instead of the corporate COEPORATION. 193 seal. Eureka Co. v. Bailey Co., 11 "Wallace, 488.— Sup. Ct. 1870. 13. It does not follow because a corporation never authorized or sanctioned a contract, that it is not responsible for a fraud in connection therewith. Butler v. Watkina, 13 Wall. 456. —Sup. Ct. 1871. 14. "A corporation, if it can properly be said to reside at all, resides in all the districts of the State creating it." Locomotive Engine Safety Truck Co. V. Ene R. R. Co., 10 Blatch. 293.— Blatchforu, 1873. 15. As to mode of proving the legal existence of a corporation, see — . Dorsey Harnester Re- wlving Rake Co. v. Marsh et al., 6 Fish. P. C. 387. — McKennan, 1873. 16. As to rights of corporations to hold pat- ents, see — . — .n. 17. A corporation does not waive an objection to the jurisdiction of a court over it by ap- pearing and pleading, by an attorney, to the jurisdiction of the court. Decker v. JV. T. Belt- ing & Packing Co., 6 Fish. P. C. 374.— Blatch- FOBD, 1873. 18. Jurisdiction over a corporation of one state cannot be acquired in another district by service of process upon one of its ofHcers in such district. — lb. 19. A Rhode Island corporation brought suit for Infringement in the Southern District of New York. In the suit defendants sought to have complainant enjoined in similar proceedings else- where. The court held that it had not jurisdic- tion for that purpose. Rumford Chemical Work- V. Seeker et al., 11 Blatch. 553. — Blatchford, 1874. 30. A defendant corporation violated an in- junction against infringing a patent. A bailable attachment was awarded against the president of the defendant company. Wetherill et al. v. New Jersey Zinc Co., 1 Banning & Arden, 105. —McKennan, 1874. 31. A private corporation must be held to re- side where its principal ofBce is located. Its resi- dence depends, not on the habitation of its stopk- holders, but on the official exhibition of its legal and local existence. Lyman Ventilating & Re- frigerator Co. v. Southard, 1 Banning & Arden, 637.— Wallace, 1875. 32. Certain parties joined in conveying to a joint-stock corporation, yet to be formed, certain patents and other property. The defendants contended that Such an agreement to convey property to a corporation yet to be formed was invalid. The court held that the principal if not the only office of the agreement was to in- dicate the intention of the parties in the forma- tion of the new company, and to show that the owner of the patents, and those holding under him, were estopped from claiming certain prop- erty which said defendants had agreed for a val- uable consideration to convey to the new com- pany. Consolidated Fruit-Jar Co. v. Whitney et al., 2 Banning & Arden, 375.— Nixon, 1876. 33. " A corporation is an artificial person. It thinks and speaks and acts only in the thoughts, words and actions of the individuals who organ- ize it and direct its proceedings. The sum of its knowledge or intelligence is found in the aggre- gate knowledge and intelligence of those who give it being and life." — Ih. 34. Where a party is under the injunction of a court, and gets up a fictitious sort of a corpora- tion for the purpose of evading the injunction, the corporation will be held liable in the same manner as the party under the injunction. — J4. 35. A corporation is an ideal, non-sentient be- ing, that has no knowledge, and can only an- swer under its seal. Vaughan v. Central Pacific Railroad Co., 4 Sawyer, 380. — Sawyer, 1877. 26. A bill for a discovery will not lie against a corporation, although in order to compel a dis- covery on oath, the officers of the corporation may be made parties ; otherwise the answer is put in under the common seal. Vaughan v. East Tennessee, Virginia & Georgia R. R. Co. , 1 Flippin, 621.— Brown, 1877. 27. " An injunction against a corporation is binding upon all persons acting for or in behalf of the corporation who have notice of the writ or its contents, whether they be actually sei'ved with it or not." Phillips et al. v. City of De- troit, 2 Flippin, 92.— Brown, 1877. 28. A state law enacted " that in all personal suits or actions hereafter brought in any court in this State against any foreign corporation not holding its charter under the laws of this State, process may be served on any officer, director, agent, clerk or engineer of such corporation, either personally or by leaving a copy at his dwelling house or usual place of abode, or by leaving a copy at the office, depot, or usual place of business of such corporation." . . . An Act of Congress provided that " no civil suit shall be brought before either of said courts (circuit or district) against any person, by any original process or proceeding in any other district than that whereof he is an inhabitant, or in which he shall be found at the time of serving such process or commencing such proceeding, etc.'' The defendant corporation was not an inhabi- tant of the state of New Jersey at the time of fil- ing the bill ; service of the subpcena in the suit was in the District of New Jersey. Jurisdiction 194 COEPORATION. was sustained. WilKamis et al. v. ^Mnpire Transportation Co. etal, 3 Banning & Arden, 533.— Nixon, 1878. 29. Once having control, the " court should look to the legislation of the State, and exercise jurisdiction over a foreign corporation when provision has been made for the service of proc- ess." — Jb. 30. By the legislation of a state, foreign cor- porations doing business in the state may J)e estopped from setting up in bar in a suit in a federal court that they are not amenable to the jurisdiction. — lb. 31. Service of process upon a person as presi- dent of a corporation is both service on the cor- poration and on such person as its agent. Col- gate V. Gold & Stock Telegraph Co. , 4 Banning & Arden, 559.— Blatchford, 1879. 32. " The acts of 1789 and 1875 declare that no suit shall be brought against any person in any other district than that in which he is an in- habitant, or where he is found." The present suit was brought in the Southern District of Illi- nois. The laws of Illinois provided " That foreign corporations, and their agents, doing business in this State, shall be subject to all liabilities, restrictions, and duties which are or may be imposed upon corporations of like char- acter in this State, and that they shall have no other or greater power is expressly stated in the statute." The allegation in the bill of com- plainant was that the St. Louis Beef Canning Co. , a corporation under the laws of Missouri, owns and possesses a slaughter-house and stock- yard in East St. Louis, 111., where beef to be canned by the company was slaughtered and pressed preparatory for and in the name of such company. Jurisdiction of the court was sus- tained, the court saying that "It is necessary that the foreign corporation should do business in the State in order to be found there, and in order to warrant service on the president when within the limits of the State. ' ' Wilson Packing Co. V. Hunter, 8 Bissell, 429.— Drummond, 1879. 33. A corporation having no conscience to probe is incapable of taking an oath. It can give information only through its officers, and these may all be summoned and may testify as ordinary witnesses. Sayles v. Richmond,, Fi'ed- ericksburg & Potomac Railroad Co., 3 Hughes, 173.--HUGHES, 1879. 34. A corporation having violated an injunc- tion, by the act of its president, through erro- neous advice, the corporation was fined, but the president was not personally punished. Macau- ley V. Wldte Sewing Machine Co. et al., 9 Fed. Rep. 698.— Blatchford, 1881. 35. The absence of the seal of a corporation from an assignment does not render it invalid or void, for the law does not require a seal to such an instrument. Gottfried v. Miller, 104 U. S. 521.— Sup. Ct.,1882. 36. A license by a corporation referring gen- erally to its patents will not include a patent belonging to an officer of such corporation. Shaw V. Colwell Lead Co., 20 Blatch. 417.— Wheblbr, 1883. 37. For a discussion of the question of ser- vice of process upon a non-resident corporation; see — . Cray et al. v. Taper Sleeve Pulley Works, 24 O. G. 603.— Achbson, 1883. 38. Where a corporation is the real defendant, and an account of profits and injunction against the further use of the patented inventions is wanted, the suit must run against the corpora- tion in its corporate capacity, and not against a part only of its stockholders and directors in- dividually. Ambler v. OUoteau et al., 107 U. S. 586.— Sup. Ct. 1883. 39. When a party named as a defendant in the bill is the owner of the whole stock in a cor- poration also named as defendant in the bill, the ' pretext that he is " doing business in the name of the corporation is too flimsy to shield him from accounting." Smith v. Standard Laun- dry Machine Co., 35 O. G. 393. — Wheeler, 1883. 40. In an action for infringement of patent in the form of a suit against a company and two of its ofiicers, if the officers have participated in the infringement, they are liable as infringers, though acting simply as officers of the company in doing it. Nat'l Car B. Shoe Co. v. Terre Haute Car & M'fg Co. et al, 19 Fed. Rep. 514. —Woods, 1884. 41. The defendant, William Deering & Co., was a corporation with a business agency at Allegheny City, Pj. A written contract be- tween such corporation and White & Wallace, the resident defendants, expressly created the lat- ter the agents of the former. Under the statutes of Pennsylvania such corporation was one trans- acting business within the state, and service of process upon its said agents was a good service upon the corporation. Hussy M'fg Co. v. Wm. Leering & Co. et al., 28 O. G. 193.— Acheson, 1884. 43. Where two directors of the complainant corporation had knowledge of the equitable title of defendant, under the patent in suit, but it was against the interest of said directors to com- municate the knowledge to the complainant cor- poration, it was held that the complainant cor- poration was not to be charged with knowledge COEPOEATION. 195 of defendant's equitable title. Davis Imp. Wrought Iron Wagon Wheel Co. v. Davis Wrought Iron Wagon Co., 23 Blatch. 231.— Wallace, 1884. 43. Where it is sought to recover a penalty for improperly stamping an article as patented, it must be proved that the marks were affixed for the purpose of deceiving the public. The acts and beliefs of the oflBcers of a corporation are the acts and beliefs of the corporation. Tompkins v. Butterfield et al. , 33 O. G. 758.— Nelson, 1885; 44. " Undoubtedly a corporation cannot be compelled to answer under oath to a bill in equity. It answers only under the seal of a cor- poration. It is for this reason the practice has obtained of making the officers of the corpora- tion parties to the bill, and requiring them to an- swer the interrogatories. This, however, does not excuse a corporation from answering, and the complainant is entitled to an answer from a corporation as well as from an individual, al- though the value of the answer may not be worth the expense of the exijeriment. Although no officer or agent is made a party to the bill, it is still the duty of the corporation to cause dili- gent examination to be made, and give in the answer all the information derived from such examination ; and if it alleges ignorance with- out excuse, a disposition on its part to defeat and obstruct the course of justice, may be inferred, which may justify the court in charging it with the costs of the suit. ' ' Colgate v. Compagnie Ih'angaise du Telegraphe, etc. , 23 Fed. Rep. 83. —Wallace, 1885. 45. Where a corporation has infringed a pat- ent, and then made an assignment in insolvency to an assignee, a bill for infringement by the corporation can be maintained against the as- signee, although the patent owner might, if he chose, present his claim to the assignee and prosecute it under the laws of the state. Oor- clon et al. v. St. Paul Harvester Works et al., 23 Fed. Rep. 147. -Nelson, 1885. 46. A corporation of one state doing business in another state is suable in the courts of the United States established in the latter state, if the laws of that latter state so provide, and in the manner provided by those laws, but not otherwise. Boston Electric Go. v. Electric Gas Lighting Co., 33 Fed. Rep. 838.— Colt, 1885. 47. " Except where the laws of the state in which it carries on business and is sued impose, expressly or by implication, a liability to suit there as a condition of its doing business in the State, a foreign corporation cannot be found, for the purpose of a suit in personam, outside of the jurisdiction or sovereignty creating it. " Wnited States V. American Bell Telephone Go. et al. , 39 Fed. Rep. 17.— Jackson, 1886. 48. "In the absence of a voluntary appear- ance, three conditions must concur or coexist in order to give the federal courts jurisdiction in personam over a corporation created without the territorial limits of the State in which the coui't is held, viz. : (1) It must appear as a matter of fact that the corporation is carrying on its busi- ness in such foreign State or district ; (2) that such business is transacted or managed by some agent or officer appointed by and representing the corporation in such State ; and, (3) the ex- istence of some local law making such corpora- tion, or foreign corporations generally, amen- able to suit there as a condition,, express or im- plied, of doing business in the State. Where the local law, expressly or by comity, permits foreign corporations to do business in the State, when it also provides for suit against them in a reasonable and proper manner, and within the just limits of the State's power and authority, and when a foreign corporation thereafter enters the State and transacts its corporate business by means of resident agents coming within the terms of the local statute, it may 'ba found, and is liable to suit there, in either the State or federal courts, by service of process on such agent." —n. 49. "The judiciary acts (Rev. St. Sec. 739 and act of March 3d, 1875, providing that no civil suit or action shall be brought against any person outside of the district in which he resides or may be found at the time of the service of process, do not affect the general jurisdiction of " a circuit '' court, but merely confer a personal privilege or exemption upon the defendant, which can be waived, and is waived by a foreign cor- jjoration, not only by a voluntary appearance to the suit, but by doing business in a State impos- ing the condition of liability to suit there by service of process on its agent. It cannot be held sufficient to give" a circuit "court juris- diction in personam over a foreign corpora- tion that it has property rights, however exten- sive within the district, or flat it has pecu- niary interests, however valuable, in business managed and conducted by others. It must it- self be carrying on business in its own right, on its own responsibility, and for its own account, and through or by means of its own agents, offi- cers, or representatives, in order to bring it within the operation of the laws of a State other than that in which it is incorporated, making it amenable to suit there as a condition of its doing business in such State. " — li. 196 COSTS. 50. The Aii;ierican Bell Telephone Company had its home and location in Boston, Mass. It was held that " furnishing the means necessary to enable the licensee companies to transact the business of telephoning in Ohio, either upon a fixed rental and royalty upon the telephone in- struments used, or a percentage of the gross re- ceipts of the business, does not constitute the carrying on of that busiiless by the American Bell Telephone Company, or make the licensee companies its managing agents, so as to render it amenable to suit here. ' ' — Ih. 51. " In exercising" the " common-law right of licensing others to use its patents," a " cor- poration owner is no more nationalized than a private owner would be under the same circum- stances. The fact that a patent-holding corpora- tion licenses others to use its patent in a par- ticular State has no more effect or operation in domesticating it within such State than the same act on the part of a private owner would render him a citizen and resident of every State in which his patent might be used. The franchise right of the patent-holding corporation in no way serves to establish the fact that such cor- poration is carrying on its business, and is to be found wherever its patent is used." — Ih. 53. The home and location of the American Bell Telephone Company was in Boston, Mass. It was connected businesswise with certain local telephone companies in Ohio. It was sought to get service upon the parent company by service upon the local Ohio corporations. The court held " that the various matters relied on to show that the American Bell Telephone Company is to be found in Ohio, and subject to the jurisdic- tion of this court, such as ownership of the telephone instruments used by the licensee cor- porations ; the ownership of stock in one or more of the local companies ; the right and power reserved to it of resuming possession of its telephone instruments, and taking control of the telephone business, in event of default on the part of the licensee corporations in complying with the provisions of the license contracts ; the sharing in the gross receipts of certain portions of the business done ; the reservation of rents and royalties ; the right to make changes, and the restrictions and limitations imposed upon the licensee companies, neither singly nor in the ag- gregate establish the two essential facts necessary to bring the American Bell Telephone ComjDany within the power and jurisdiction of this court, viz., that said corporation is now, or was at the commencement of this suit, carrying on its busi- ness in the State of Ohio, and that it had a ' managing agent ' or agents representing it here. The truth, of the plea being assumed, the only relation existing, between the American Bell Telephone Company and the local corporations is really and technically that of lessor and lessee, licensor and licensee ; the Bell Telephone Com- pany being merely the lessor of the telephone instruments, and the licensor of the right to use the patent embodied therein, on certain terms, as to rents and royalties and otherwise, agreed upon between the parties, the contracts being en- tered into, not in Ohio, but at Boston, Mass." —lb. 53. "If a corporation is engaged without li- cense in the manufacture of an article protected by letters-patent, its acts in that behalf are un- lawful, and its managing officers cannot shield themselves from individual liability to an injunc- tion upon the plea that what they did was done as officers or agents of the corporation, but not in their own behalf as principals. ' ' Iowa Barbed Steel Wire Co. v. Bouthem Barbed Wire Go., 30 Fed. Eep. 123.— Thayer, 1887. 54. "A corporation is an artificial body, and there is no identity between it and the persons who compose it. ' Bate Refrigerating Co. v. Gillett et al., 30 Fed. Rep. 685.— Walks, 1887. 55. Although a corporation cannot be com- pelled to answer a bill in equity under oath, it can be required to answer, and must answer fully. Oamewell Fire Alarm I'el. Co. v. JVew York, 31 Fed; Rep. 312.— Wallace, 1887. 56. Where the statute restricts suits to the district in which the acts are committed, a con- sistent and reasonable interpretation of the statute requires it to be held that a corporation, for the purposes of such suits, has a " managing agent," and is sufficiently " found" within the district in the person of an individual who has the direction, management, and control of its business therein, out of which the acts com- plained of have arisen, and who so far represents the corporation as to make his acts incurring penalties in that business the acts of the corpora- tion. Hat Sweat M'fg Co. v. Davis dewing Mach. Co., 31 Fed. Rep. 394.— Bhown, 1887. COSTS. "Costs" in the Patent Acts. Act approved April 10th, 1790. Section 5. (Provides for repeal of patent wrongfully obtained, and gives costs to the pat- entee if the attempt at repeal does not succeed.) [Repealed February 21st, 1793.] Act approved February 21st, 1793. COSTS. 197 Sec. 6. (Provides defences to an action for in- fringement, and gives defendant costs if suc- cessful.) Sec. 10. (Provides for repeal of patents wrongfully obtained, and gives the patentee costs if the attempt at repeal does not succeed.) [Re- pealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 14. (Gives costs to a successful plaintiff in an action for infringement.) Sec. 15. (Gives costs to a successful defendant in an action for infringement.) [Repealed July 8th, 1870.] Act approved March 3d, 1837. Sec. 9. (Deprives plaintiff or complainant of costs in a suit for infringement v^here disclaimer is filed after suit brought.) [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 39. (Provides for penalty " with costs" for wrongfully stamping articles as patented.) Sec. 52. (Provides for prosecution of an ap- plication for patent by bill in equity • " And in all cases where there is no opposing party, a copy of the bill shall be served on the Commissioner, and all the expenses of the proceeding shall be paid by the applicant whether the final decision is in his favor or not. ' ') Sec. 59. (Provides for recovery of damages " with the costs," " by action on the case," for infringement of patent.) Sec. 60. (Deprives plaintiff or complainant of the costs if disclaimer is filed after suit brought for infringement.) Sec 61. (Gives costs to a successful defendant in an action for infringement of patent.) [Re- pealed June 33d, 1874.] Act approved June 23d, 1874. Sec 4915. (Provides for the prosecution of an application for patent hy bill in equity and : " In all cases where there is no opposing party, a copy of the bill shall be served on the Commis- sioner, and all the expenses of the proceedings sfiall be paid by the applicant whether the final decision is in his favor or not. ") Sec. 4919. (Gives costs to a successful plain- tiff in an action on the case for infringement of patent.) Sec 4923. (Deprives a plaintiff or applicant of costs where a disclaimer is filed after suit brought for infringement of patent.) Cases. 1. Under Section 20 of the Judiciary Act of 1789 where, in a patent case, the plaintiff re- covers less than five hundred dollars, he is not to be allowed costs. Kneasa v. Schuylkill Bank, 4 Wash. 106.— Washington, 1831. 2. Witness fees may be taxed for witne.sses living more than one hur^dred miles from the place, and travelling to attend personally. The Judiciary Act of 1789, Chapter 30, is simply a provision as to taking depositions of such wit- nesses. ProutyY. Ruggles, 3 Story, 199. — Stoky, 1843. 3. By the court : " In my circuit court, the plaintiff in patent cases has never been required to give any security for costs." Woodmorthy. Slierman, 3 Story, 171.— Story, 1844. 4. A complainant may be required to give se- curity for costs. Orr Adm'x v. Littlefield et al., 1 Woodbury & Minot, 13. — Woodbury, 1845. 5. "It is, doubtless, a sound principle in chancery to exercise some wider discretion over the allowance of costs than is done in a court of law. But still the general rule is there, as at law, to give costs to the prevailing party. What prevails by law — what is legal -is pre- sumed to be moral and conscientious and equitable, till the contrary is shown. This rule is applied likewise to bills for injunctions as well as other proceedings. ) But if peculiar cir- cumstances of an equitable character ex|st in favor of defendant receiving no costs in the case, or none for particular items, it is deemed justi- fiable to withhold them. But the burden to show the peculiar circumstances is on the com- plainant, ' ' where the defendant prevails. Hovey V. Stevens, 3 Woodbury & Minot, 17. — Wood- bury, 1846. 6. " There is no act of Congress expressly enacting that costs generally shall be given to either party, but several merely specify some par- ticulars as first remarked, which may be taxed for particular officers and persons." "It is understood to have been the practical usage by the courts of the United States to conform to the state laws as to costs when no express pro- vision has been made and is in force by any act of Congress in relation to any particular item, or when no general rule of court exists on this subject." Hathaway v. Boach, 2 W. & M. 63. — Woodbury, 1846. 7. " The true course is not to attempt to make the party prevailing wh/>U, as it is termed, for all his various items of expense and trouble, for that would be vain without much further legis- lation in most cases of parties involved in litiga- tion." — lb. 8. " The presumption of law and fact must be that . . . witnesses should continue their at- tendance, and be paid for it till they were dis- charged by the parties of the court."— J J. 198 COSTS. 9. The cost of a copy of patentee's models in I the Patent OfHce, procured by the party defend- ! ant, is to be taxed at what it was actually worth to make them, not necessarily what it cost the defendant. — lb. 10. The cost of copies of the assignments by the plaintiff, procured by the party defendant, is to be taxed. — 11. 11. The cost of a copy of plaintiff's patent, procured by defendant, is not to be taxed, be- cause it is plaintiflE's duty to produce the copy. — iJ. 13. Where a demurrer to a bill is overruled, the party making it can, on paying costs, have a trial on the merits or principal matter in dis- pute. Woodworth et al. v. Edwa/rds et al. , 3 "W. & M. 120.— Woodbury, 1847. 13. Complainants filed interrogatories unau- thorized by law and bad in substance. Defend- ants demurred -and prevailed thereon. Costs were awarded against complainants, but their payment was stayed until the matters in issue were disposed of. — li. 14. " In these cases of new trial for newly dis- covered evidenbe, the terms are usually that the costs of the former trial be first paid." Aiken V. Bemis, 3 W. & M. 348.— Woodbuet, 1848. 15. The defences which the statute permits to be made under the general issue, with special notice, cannot be set up in special pleas. They will be stricken out with costs. Wilder v. Gay- ler et al., 1 Blatch. 597.— Nelson, 1850. 16. If a disclaimer is entered at the Patent OSice before a suit is instituted, plaintiCE re- covers costs, but not if made during the progress of the suit. Hall v. Wiles, 3 Blatch. 197.— Nelson, 1851. 17. The Circuit Court may properly tax costs if the case has been to the Supreme Court and returned. Sizer et al. v. Many, 16 Howard, 98. —Sup. Ct. 1853. 18. "It is the costs on final hearing alone which are by the statute chargeable by one party against the other. ' ' Stimpson et al. v. Brooks, 3 Blatch. 456.— Bbtts, 1856. 19. In an action at law the expense of a model of defendants' infringing machine, made by order of court, cannot be taxed in the costs, al- though it might be otherwise in a suit in equity. Parlcer v. Bigler et al, 1 Fish. P. C. 285.— Geier, 1857. 30. "As the fee bill gives no fee for services or mileage incase of notice under rules of court, the 48th rule of court permits notice of all such rules to be given by mail. The service by the marshal was therefore not ofllcial or necessary." — /*. 21. " When the same witness has been brought to court in suits where the parties are different, one cannot complain that another has paid him, if he has obeyed the process of each, and given his testimony when called. But where a witness has been produced by the same plaintiff to give his testimony in more cases than one against different defendants, his right to de- mand from the plaintiff any fee for more than his actual attendance and mileage seems more doubtful. The witness should have but one re- muneration for but one service. . . . When the parties are not the same, the witness has a right to fee in each suit, and cases where the plaintiff alone is a party in each suit, are left in the same category with those where all the parties are different." — lb. 22. In Section 6 of the act of March 2d, 1793, the marshal's fees for serving subpoenas cannot cover more than one hundred miles of the dis- tance, although the routes of travel may be such as to compel him to travel a greater distance in order to reach a witness who is only one hun- dred miles away. — lb. 33. The right of the plaintiffs to costs comes from the verdict in their favor for any amount of damages, without reference to any increase thereof by the court. Mercliant et al. v. Lewis, 1 Bond, 172.— Leavitt, 1857. 34. " Costs belong to the attorney." Bamom etal. V. Jf/ew York, 4 Blatch. 157. — Ingersoll, 1858. 35. If, during a trial, it appear that a claim is void for lack of novelty, and no disclaimer has been filed, plaintiffs are thereby deprived of costs. Singer et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 36. "The mileage of witnesses who have at- tended without being summoned by legal proc- ess" cannot be taxed as costs in cases at law. Woodruff et al. v. Ba/rney et al., 1 Bond, 528. — Leavitt, 1863. 27. " The subject of costs in cases at law, in the courts of the United States, is wholly gov- erned by. statute, and is not dependent on the discretion of the judge of those courts." — lb. 28. Where a party in good faith, in a case at law, procures models of the device of the pat- ents in suit, the expense thereof will be taxed in the costs. —1 b. 29. In a case at law, copies of patents not procured by order of the court cannot be taxed in the costs. — lb. 30. In an equity CEise argument having begun, complainants produced a naturalization certifi- cate, and it being admitted by defendant upon terms to be settled by the court as to costs, the COSTS. 199 court found as costs the fees of all the witnesses whose testimony was taken to prove alienage and one hundred dollars as the estimated expense of the defendant in procuring that testimony. Stainthorp et al. v. Humiston, 4 Fish. P. 0. 107. —Hall, 1864. 31. In a bill of costs, the following items were disallowed : (1) The expense of complainant in attending court at Albany when the hearing of the case was transferred to New York. (2) Models which were certified copies of models in the Patent Office, and old machines and parts of machines, and the expense of their production. (3) The cost of printing pleadings and testimony and of making drawings ; also cost of printing abstract of pleadings ; also cost of printing brief and supplemental brief. (4) The cost of copy- ing papers to be used in the suit. (5) Expense of counsel to Cooperstown and back on motion to modify the decree. (6) The expense of re- porting argument on final hearing in court. Money paid for telegraphic despatches was al- lowed. Hussey v. BraMey et al., 5 Blatch. 210. —Hall, 1864. 32. Complainant brought suit on five patents. The court found for defendants on four of them, and the judges disagreed as to the fifth. Bill dis-, missed without costs. American Wood Paper Co. V. Heft et al ,2 Fish. P. 0. 316.— Gribb, 1867. 33. Where complainants are victorious as to one claim in suit, and respondent is victorious as to the other, no costs are to be allowed. Yale & Gf-reenleaf M'fg Co. et al. v. North, 5 Blatch. 455.— Shipman, 1867. 34. Where a verdict is set aside and a new trial granted, the costs will abide the result. Densmore et al. v. Sehofield et al., 4 Fish. P. C. 148.— S WAYNE, 1868. 35. Disclaimer during suit takes away the right to costs. Tuck v. BramMll, 6 Blatch. 95. — Blatchford, 1868. 36. Under the act of February 26th, 1853, but one docket fee is to be allowed in docket cases. Troy Iron & Nail Factory v. Om-ning et al., 7 Blatch. 16.— Nelsok, 1869. 37. Section 1 of the act of February 26th, 1853, "provides: 'For each deposition taken and admitted as evidence in the cause, two dollars and fifty cents.' This relates to tes- timony taken out of court, under authority which will entitle it to be read as evidence in court, and has no relation to oral testimony taken in court or before a master. It applies, in cases at common law, where depositions are given in evidence on the trial, and in suits in equity, where the depositions are read at the hearing."— /J. 38. The act of February 26th, 1853, does not authorize the taxation of printers' fees for print- ing testimony taken before a master on an ac- counting. — lb. 39. " No per diem allowance should be taxed for the attendance before the master of witnesses on the part of the plaintiffs whose testimony was afterward abandoned or given up, or was stricken out or rejected by the master, where the striking out or rejection has been sustained by the court. It would be unreasonable and against the established rule of taxation to tax costs in favor of a party for acts or services which were useless or illegal, and which only lead to in- creased expense, and to a waste of the time of the court and of all persons concerned." — lb. 40. " Trial and final hearing have well-known definite meaning in the law, and they are used in the statute" (of February 26th, 1853), "in that well-known sense. ' Trial ' is used to de- scribe the process of determining the issues in an action at law, and ' final hearing ' the sub- mission of the case for a determination thereof upon the pleadings, or pleadings and proofs, or otherwise, so that the case may finally be dis- posed of." Doughty v. West, Bradley & Gary M'fg Co., 8 Blatch. 107.— Woodrtiff, 1870. 41. Docket fees are not to be allowed on refer- ence to a master. — lb. 42. "The Supreme Court, by Rule 88 of the rules of equity, has assumed to authorize the Circuit Court, or perhaps to declare the gen- eral power of the Circuit Court in equity, to ap- point standing masters in Chancery in their re- spective districts, and has provided that ' the compensation to be allowed to every master for his services in any particular case shall be fixed by the Circuit Court in its discretion, having no regard to all the circumstances thereof.' " " The clerk has no power, under this rule, to fix the compensation to be allowed, and his taxa- tion is therefore inoperative. "—J6. 43. The fees of masters were prescribed in the act of February 26th, 1853. By that statute the fees of commissioners for attending to a reference in a litigated matter are made three dollars a day, and it is not obvious why a master in a like mat- ter should have larger fees.—/*. 44. In the absence of a statute prescribing fees of masters, the court may fix the same. In a case where unusual labor and difficulty were thrown upon the master, his per diem fees were fixed at ten dollars per day where testimony was taken, and five dollars per day where only ad- journment was had. —lb. 45. The patent in question was for detachable teeth for saws. Complainant worked the pat- 200 COSTS. ent solely and by himself. Complainant had had recovery against certain makers and sellers of the infringing saws. His bill against the user of the same saws was dismissed without costs to either party. Spaulding v. Page et al., 1 Sawyer, 703.— Sawyer, 1871. 46.' " The act of Congress relating to costs makes no allowance for printing testimony. It is, no doubt, very inconvenient not to have it printed, but, however inconvenient, it is not properly chargeable against the losing party as an item of costs. ' ' Spaulding v. Tucker et al. , 4 Pish. P. C. 633.— Sawybk, 1871. 47. "The travelling fees of those witnesses who came from other states, at the request of the complainant, to attend the hearing, and even those who came voluntarily, and not in obedi- ence to a subpoena, from a distance within the state, ought not to be taxed as costs against the defendants. ' ' — lb. 48. In a case pending on the Pacific coast, a large number of witnesses were examined in New York City, by agreement of the parties. The court in its discretion allowed the fees of those witnesses on the same basis as prescribed by the statute. — lb. 49. The costs in a court of law are determined by statute. In a court of equity the court has discretion with reference thereto. — lb. 50. ' ' The mere fact that the plaintiffs obtained a verdict is not conclusive that they are also en- titled to costs ; for they may have obtained the verdict under, and in pursuance of, Section 9 of the act of 1837, which warrants a recovery for an infringement of what is, in fact, new, and claimed as the plaintiffs' invention, notwithstand- ing the patentee has also, through mistake, with- out fraud or intent to deceive, claimed some- thing which is not new." Peek et al. v. Frame et al., 5 Pish. P. C. 311.— "Woodruff, 1871. 51. " If . . . verdict was rendered for an in- fringement of valid claims, and it appeared that other claims were rejected in pursuance of that section, then, although plaintiffs obtained a ver- dict, they are not entitled to costs. But if the verdict was, in fact, upon all the claims, in affirmance of the validity of each, and of the novelty of the inventions claimed in each, then the plaintiffs are entitled to costs." — lb. 53. " The mere fact that the plaintiffs have, since the trial and verdict, disclaimed one or more of the claims made in the patent, is not alone conclusive that the plaintiffs are not enti- tled to costs. If the verdict was rendered . . . upon all the claims, affirming their validity and the novelty of the invention claimed in each, then what the plalntifEs may have said or done, by disclaimer or otherwise, does not deprive them of the effect of the verdict ; and so long as it re- mains in force, not set aside, it is conclusive be- tween the parties. The fact of disclaimer is high evidence, in such case, that the verdict was wrong, and that the plaintiffs should only have recovered on the parts of the invention of patent therefor which are not disclaimed, and such evidence might warrant a new trial. But while such a verdict stands, it is conclusive." —lb. 53. For example of facts warranting the dis- missal of bill of complainants without costs, see — . Sisson et al. v. Gilbert et al., 9 Blatch. 185. —Woodruff, 1871. 54. In an accounting before a master, costs had accumulated to a very large amount. The court, holding this to be through the unreason- able line of proof followed by the complainant, held that no costs should be charged against either party, but that each party should pay its own costs. Troy Iron & Nail Factory v. Com- ing etal., 10 Blatch. 333.— Nelson, 1872. 55. "Where complainant's conduct has led de- fendants into infringement, costs will not be awarded against defendants. Sanien v. Hall et al., 11 Blatch. 395.— "Woodruff, 1873. 56. Notwithstanding an appeal has been taken to the Supreme Court from the decree of a cir- cuit court, it yet remains for the circuit court to enforce its decree for the payment of the mas- ter. Nor would the case be varied if the defend- ants had given a bond to the master to stay pro- I ceedings to enforce payment of his compensation. I Myers et al. v. Dunbar et al., 12 Blatch. 380. — Blatchpord, 1874. 57. "Where the damage shown is but fifteen cenls, a decree for an injunction will be granted without costs. Geier v. Ooetinger, 1 Banning & Arden, 553.— Swing, 1874. 58. "Where, pending a patent suit, defendant becomes bankrupt, and its assignee becomes a party to the proceedings, the costs accruing after such intervention are to be taken in full out of the bankrupt estate. Webster et al. v. New Brunswick Carpet Co. , 3 Banning & Arden, 67.— Nixon, 1875. 59. In the United States Circuit Court for the Northern District of New York, the provisions of title 3, Chapter 10, Part 3, of the revised statutes of the state of New York, relative to se- curity for costs, were adopted by the rules of the court. Under such rules a corporation com- plainant residing in the city of New York, not a resident of that district and not within the jurisdiction of that court, was held to give se- curity for costs. Lyman Ventilating & B^rig- COSTS. 301 erator Co. v. Southard, 1 Banning & Arden, 637. — Wallace, 1875. 60. Where, of different claims in suit, a part are void and no disclaimer has been filed, costs cannot be recovered. Bussey et al. v. Wager et at, 3 Banning & Arden, 329.— Wallace, 1876. 61. Where it is stipulated that one case of a number is- to stand as a test case for all, it is proper to tax a docket fee in each case. Ooodr year Dental Vulcanite Co. v. Osgood, 3 Banning & Arden, 539.— Shepley, 1877. 63. ' ' Wherever a final decree is entered by the court, in an equity case, after replication filed, for the purpose of taxation of the docket fee, this is to be considered as the ' final hear- ing ' referred to in revised statutes, Section 824. " —lb. 63. " This docket fee is not to be taxed for an attorney, unless the name of the attorney taxing the fee has been entered on the docket before the filing of the replication, and such attorney has been admitted to the bar of the Circuit Court of the United States in this or some other circuit, or to the bar of the Supreme Court of the United States. ' ' — 1 b. 64. " In the taxation of costs, ' final hearing ' is to be considered as the submission of a cause in equity for the determination of the court, so that the case may be finally disposed of upon bill and answer, or bill, ansvrer, and replication, or upon pleadings and proofs, or otherwise after the case is at issue." — lb. 65. Complainant's patent was for an improve- ment in the cushions of billiard tables, and a suit was brought against a certain number of tables. Part of the tables were held to infringe and part not. Complainant was allowed to recover one half of his costs. Callander v. Bailey, 3 Ban- ning & Arden, 317.— Shepley, 1878. 66. The clerk, by consent of parties, taxed costs for the plaintiffs, and deducted from the gross taxation so much of the expenses as he found had been caused by taking the evidence on a claim afterward declared by the court to be void. The court sustained the clerk. Holbrook et al. V. Small, 3 Banning & Arden, 635. — Lowell, 1878. 67. Where, after a hearing in damages and profits, the court gave plaintiff nominal damages only, the court gave the plaintiff costs as to the hearing on the merits, and the defendants costs as to the hearing in damages and profits. Inger- sollv. Musgroveet al., 14 Blatch. 541. — Blatch- FORD, 1878. 68. Where complainant gets but nominal dam- ages and no profits, the costs of the reference to the master go to the defendants. Qarretaon v. ClarTc et aZ., 4 Banning* Arden, 536. — Bi^atoh- FORD, 1879. 69. Where, on accounting, complainants re- cover only nominal damages, the defendant will recover the costs of the reference. Msk et al. v. West, Bradley & Cary M'fg Co., 19 O. G. 545. — Blatchford, 1880, 70. By the court : " As the complainants suc- ceed as to one patent and are defeated as to the other, I suppose it will be fair that neither party shall recover costs." Elfelt et al. v. Steinliart et al., 6 Sawyer, 480.— Sawyer, 1880. 71. " The provision is not that no costs shall be recovered until after disclaiiner, but it is as extensive as the whole existence of the case, and prohibits the recovery of any costs at all in the case." Burdett v. Eatey etal., 19 Blatch. 1. — Wheeler, 1880. 73. Where a cross bill is dismissed on the ground that the court had full power in the premises without the cross bill, no costs are to be allowed. Lockwwood v. Clearland, 6 Fed. Eep. 731.— NixoN, 1881. 73. " The statute does not mean that claims not in issue should be contested for the mere purpose of settling the costs." Am. Bell Tele- plwne Co. et al. v. Spencer et al. , 8 Fed. Eep. 509. — Lowell, 1881. 74. " Costs generally, in proceedings in equity, do not follow as matter of right, as in proceed- ings at law, but are subject to the discretion of the court, and are to be awarded as a part of the decree or they, cannot be recovered, although they may be, and generally are, taxed after the decree. The determination as to the costs must ordinarily be made upon the hearing in chief. . . . The costs cannot be taxed fully, and no ex- ecution can properly issue until the final decree. . . . They are awarded as issued, unless there are special circumstances to govern them." Coburn et al. v. Schroder et al., 19 Blatch. 493. — Wheeler, 1881. 75. The fees of the master are to be borne in the first instance by complainant. Maodonald V. Shepard, 10 Fed. Rep. 919.— Lowell, 1883. 76. A case will not be reviewed on appeal merely to settle costs of suit. Union Paper Bag Mach. Co. et al. v. Nixon et al., 105 U. S. 766. — StJP. Ct. 1883. 77. By the court : "The conclusion is justi- fied by the record that the defendants were will- ing at the outset, and through their attorney offered, to pay the complainant the amount of the net profits realized by them ; but the com- plainant was desirous of mulcting them in dam- ages, under circumstances not calling for such a course. Costs have been unnecessarily accumu- 203 COSTS. lated, and I think it just tliat the parties be re- 1 quired to pay their own costs, and each party I must pay one half of the master's fee." Ford V. Kurtz et al., 11 Bissell, 334.— Haklan, 1882. 78. Where, in an action at law, a disclaimer which ought to be made is not made before the suit is brought, plaintiff cannot have costs. Proctor \. Brill et al, 16 Fed. Rep 791.— Mc- Kennan and Butler, 1883. 79. "Costs in equity cases are generally sub- jected to the discretion of the court, to be exer- cised, however, according to general legal prin- ciples, and not arbitrarily. Ordinarily the recovering party recovers costs in suits in equity as well as at law. " McKay v. Jackman, 17 Fed. Rep 641.— Wheblbr, 1883. 80. Where the complainant has a substantial recovery on the merits for the wrongful inva- sion of his rights by the defendants, and the de- fendants have not prevailed upon any issue, upon any distinct item made in the case, no part of the costs will be allowed to the defendants. Urner v. Kayton et al., 17 Fed. Rep. 845. — Whbelek, 1883. 81. Where complainants sue upon two pat- ents and both are litigated, and the defendants prevail as to one, no costs will be awarded to either party. Adams et al. v. Howard et al. , 22 Blatch. 47.— Wallace. 1884. 82. Where the sum in dispute is small, the court will take the question of costs into special consideration. Oreen v. Barney, 19 Fed. Rep. 430.— Lowell, 1884. 83. Where a complainant abandons a claim in his reissue patent in suit because of its in- validity through undue expansion, and there is no hearing upon that claim, a disclaimer is not necessary before a decree, nor are costs to be de- nied. Munday v. Lidgewood JtTf'g Co., 20 Fed. Rep. 191.— Wheeler, 1884. 84. " Courts of equity, . . . having a large discretion in matters of costs, frequently give costs in intermediate stages of a cause, without waiting for the final decree. . . . This discre- tion can be properly exercised in giving to the prevailing party the incidental costs which have arisen during the progress of a cause about a matter completely disposed of by the court, and not necessary to be considered on further direc- tions." Avery et al. v. Wilson, 20 Fed. Rep. 856.— Dick, 1884. 85. Where the defendant made a general offer to pay royalty which complainant refused to ac- cept, but there was no actual tender of any specific sum of money, and defendant was sued for infringement, costs were awarded to com- plainant. Allen V. Deacon, 31 Fed. Rep. 122. — Sawyer. 1884. 86. In an interference proceeding in the United States Circuit Court under Section 4915 of the revised statutes at large, costs will be awarded to successful complainants. Butler et al. V. Slmw, 21 Fed. Rep. 321. -Ghat, 1884. 87. Where different claims in a patent are in issue, and complainant prevails as to some, while defendant prevails as to others, costs will be awarded to neither party. Hayes v. BickeVkoupt, Sr., 21 Fed. Rep. 567.— Wheeler, 1884. 88. A party to a suit is not entitled to counsel fees for witnesses when before the master, and it is doubted whether he is entitled to fees for witnesses when before a special examiner. Strauss v. Meyer, 23 Fed. Rep. 467.— Treat, 1884. 89. Although a patentee who procures a pat- ent fraudulently may be mulcted in costs, his innocent assignee may not be. United States v. Gunning et al., 23 Blatch. 31.— Wheeler, 1884. 90. Where, in a contest involving priority of invention, complainant prevails as to one branch of the case and defendants prevail as to an- other, no costs will be awarded. Wooster v. Hill et al., 23 Fed. Rep. 830.— Wheeler, 1885. 91. "To constitute ' a final hearing in equity or admiralty ' within the meaning of Section 824, there must be a hearing of the cause on its merits ; that is, a submission of it to the court in such shape as the parties choose to give it, with a view to a determination whether the plaintiff or libellant has made out the case stated by him in his bill or libel as the ground for the permanent relief which his pleading seeks, on such proof as the parties place before the court, be the case one of pro confesso or bill or libel and answer, or pleadings alone, or pleadings and proofs. Nor does it detract from the force of this conclusion that what is called an interlocu- tory decree, as distinguished from a final decree, is often entered as the result of a decision on a final hearing. . . . " The docket fee is given by Section 824 as a fee to the solicitor or proctor ' on ' the final hearing. If there is such a final hearing as above defined, the fee is taxable, as between party and party, in behalf of the party to whom the costs of the cause are awarded. Nor is there anything in the statutes which forbids the allowance of a docket fee on or for each trial before a jury, where there is a verdict on or for each hearing iu equity or admiralty, if there are two or more final hearings, such as are above defined, in the same cause. A new trial granted after verdict COSTS. 203 Is as complete a trial, if there is a verdict in it, as was the first trial." Wooster v. Randy, 23 Blatch. 113.— Blatchpobd, 1885. 93. For a resume of decisions as to docket fees, see — . lb. 93. For a resume of decisions on solicitors' deposition fees, see — . lb. 94. Where depositions taken in one cause are simply read in another cause by stipulation, solicitors' fees thereon will not be taxed in .such other cause. — lb. 95. For a list of travelling expenses of mes- sengers and attorneys and expenses of box, for which costs were disallowed, see — . lb. 96. For a list of machine exhibits for which costs were disallowed, see — . lb. 97. For examples of photo-lithographing ex- hibits for which costs were disallowed, see — . lb. 98. " If a party does not pay a witness either before or after he has testified, the presumption is that the debt is forgiven, unless the failure to pay is explained in such wise that the fee can be considered as if ' paid,' because both parties in- tend it shall be paid." And costs will not be taxed therefor. — Tb. 99. Where, in a group of cases of the same kind, the depositions taken in one case are stip- ulated into the others, the solicitors' fees on such depositions will be taxed in the other cases. — lb. 100. " Where several cases are heard at the same time on one agreement, a docket fee is al- ways taxed in such cases. ' ' — lb. 101. Where a witness actually testif3nng but once is paid for his attendance in different cases to which the testimony applies, his costs will be taxed in the different cases. — lb. 103. For a list of certified copies for which costs were taxed, see — . lb. 103. It is too late to object that testimony is incompetent or immaterial after final hearing, and when the question of costs is under consid- eration. — lb. 104. Where a complainant prevailed on ac- count of a disclaimer filed after his suit was brought, and where he failed as to a large part of his case, costs were denied to him. — lb. 105. Where testimony is taken once, equally for use in two cases, it should be taxed not wholly in one case or the other, but equally in each. Thayer v. Hart, Jr., et al., 30 O. G. 776.— Wheeler, 1884. 106. Where complainants recover only nom- inal damages, the costs of the accounting will go against the complainants. Dobson et al. v. Hart- fm-d Carpet Go., 114 U. 8. 439.— Sup. Ct. 1885. 107. The expense of obtaining a model of de- fendant's infringing machine is not taxable in the costs awarded to the victorious complainant. Comely v. Marekwald, 23 Blatch. 348.— Wal- lace, 1885. 108. Although a defendant may prevail, yet if his previous course of action has tended to mislead complainants, costs may be withheld from defendant. Bunker et al. v. Stevens, 36 Fed. Rep. 245.— Nixon; 1885. 109. Where there are two patents in litigation and each party prevails on one, and the costs upon each are substantially alike, no costs will be al- lowed to either. Railway Register M'fg Co. v. Broadway & Seventh Ave. Railway Co.,- 34 O. G. 931.— Wheeler, 1886. 110. It turned out in the trial of a cause that a disclaimer should have been filed to one claim of the patent in issue. Before the case was tried in the Supreme Court, the patent expired. The Supreme Court held " that the decree be- low must be reversed as to the award of costs and affirmed in all other respects, with interest until paid, at the same rate per annum that de- crees bear in the courts of the state of New York, and the case be remanded to the Circuit Court, with direction to modify the decree ac- cordingly. Each party will bear his own costs in this court, and one half of the expenses of printing the record." Tale Lock M'fg Co. v. Sargent, 117 U. S. 537. -Snp. Ct. 1886. 111. Where only nominal damages are found, final decree will be without costs. Moffitt v. Cavanagh, 27 Fed. Rep. 511. — Shipman, 1886. 113. Where a rehearing in damages and profits is had for complainants' benefit and because complainants did not produce satisfactory evi- dence at the first hearing, the costs of such refer- ence go against complainants. Fay et al. v. Al- len, 30 Fed. Rep. 446.— Coxe, 1887. 113. The mileage of the oflBcers of a defend- ant corporation, while testifying before the mas- ter on an accounting, are not to be allowed as costs. Am. Diamond Brill Co. v. Sullivan Mach. Co., 33 Fed. Rep. 553.— Ship-man, 1887. 114. Where a party has paid the master's fees the clerk has taxed, the clerk will not include them in the bill of costs without an order of the court. — lb. 115. A defendant, under order of the court, paid the master's fees. Subsequently the case was reversed and given to defendant. These costs were taxed in favor of defendant. — lb. 116. Where, upon a certain branch of a case, the defendant makes no contest, costs will not go against him as to this branch. CMcopee Folding Box Co. v. Rogers, 33 Fed. Rep. 695.— Wallace, 1887. 304 DAMAGES AND PROFITS. 117. After a case was at issue it was dismissed, on complainant's motion, " witliout prejudice to the complainant of his assignee's rights, and with the usual costs to the defendants." The taxa- tion of the docket fee in favor of defendants was disallowed. Ryan v. Gould et al., 41 O. G. 1392.— Lacombb, 1887. 118. In this case the cost of certified copy of file wrapper and contents of the patent in suit, and of certified copies of other patents procured by defendants to enable them to properly pre- sent their defence, was disallowed as costs. — lb. DAMAGES AND PROFITS. "Damages and Pkofits" ts the Patent Acts. Act approved April 10th, 1790. Section 4. And be it further enacted, That if any person or persons shall devise, make, con- struct, use, employ, or vend, within these United States, any art, manufacture, engine, machine, or device, or any invention or improve- ment upon, or in any art, manufacture, engine, machine, or device, the sole and exclusive right of *hich shall be so as aforesaid granted by pat ent to any person or persons, by virtue and in pursuance of this act, without the consent of the patentee or patentees, their executors, adminis- trators, or assigns, first had and obtained in writing, every person so offending shall forfeit and pay to the said patentee or patentees, his, her, or their executors, administrators, or assigns, such damages as shall be assessed by a jury,' and, moreover, shall forfeit to the person aggrieved the thing or things so devised, made, construct- ed, used, employed, or vended, contrary to the true intent of this act, which may be recovered in an action on the case founded on this act. [Repealed February 31st, 1793.] Act approved February 31st, 1793. Sec. 5. And be it further enacted. That if any person shall make, devise, and use, or sell the thing so" invented, the exclusive right of which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators, or assigns, ' first obtained in writing, every person so offending shall pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or li- censed, to other persons, the use of the said in- vention, which may be recovered in an action on the case founded on this act, in the Circuit Court of the United States, or any other court having competent jurisdiction. [Repealed July 4tti, 1836.] Act approved April 17th, 1800. Sec. 3. And be it further enacted. That where any patent shall be or shall have been granted pursuant to this or the above-mentioned act, if any person without the consent of the patentee, his or her executors, administrators, or assigns, first obtained in writing, shall make, devise, use, or sell the thing whereof the exclusive right is se- cured to the said patentee by such patent, such person so offending shall forfeit and pay to the said patentee, his executors, administrators, or assigns, a sum equal to three times the actual damage sustained by such patentee, his execu- tors, administrators, or assigns, from or by rea- son of such offence, which sum shall and may be recovered by action on the case founded on this an& the above-mentioned act, in the Circuit Court of. the United States, having jurisdiction thereon. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 14. And be it further enacted. That when- ever, in any action for making, using, or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or by any pat- ent which may hereafter be granted, a verdict shall be rendered for the plaintiff in such action, it shall be in the power of the court to render judgment for any sum above the amount found by such verdict as the actual damage sustained by the plaintiff, not exceeding three times the amount thereof, according to the circumstances of the case, with costs ; and such damages may be recovered by action on the case, in any court of competent jurisdiction, to be brought in the name or names of the person or persons inter- ested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States. [Repealed July 8th, 1870.] Act approved March 2d, 1861. Sec. 13. And be it further enacted. That in all cases where an article is made or vended by any person under the protection of letters-pat- ent, it shall be the duty of such person to give sulBcient notice to the public that said article is Bo patented, either by fixing thereon the word " patented," together with the day and year the patent was granted ; or when, from the charac- ter of the article patented, that it may be im- practicable, by enveloping one or more of the said articles, and affixing a label to the package, or otherwise attaching thereto a label on which the notice, with the date, is printed ; on failure of which, in any suit for the infringement of let- ters-patent by the party failing so to mark the article the right to which is infringed upon, no damage shall be recovered by the plaintiff, ex- DAMAGES AND PEOFITS. 205 oept on proof that the defendant was duly noti- fied of the infringement, and continued after such notice to make or vend the article patented. [Repealed July'Sth, 1870.] Act approved July 8th, 1870. Sec. 38. Provides that where a patentee, his assignee, or his legal representatives, in vending patented articles, fails to mark them with the date of the patent, then in "any suit for in- fringement by the party failing so to mark, no damages shall be recovered by the plaintiff, ex- cept on proof that the defendant was duly noti- fied of the infringement, and continued, after such notice, to make, use, or vend the article patented. ' ' Sec. 55. And be it further enacted. That all actipns, suits, controversies, and cases arising under the patent laws of the United States shall be originally cognizable as well in equity as at law, by the circuit courts of the United States, or any district court having the powers and jurisdiction of a circuit court, or by the Supreme Court of the District of Columbia, or of any territory ; and the court shall have power, upon bill in equity filed by any party aggrieved, to grant injunction according to the course and principles of courts of equity to prevent the violation of any right secured by patent, on such terms as the court may deem reasonable ; and upon a decree being rendered in any such case for an infringement, the claimant [complainant] shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction, and the court shall have the same powers to increase the same in its discretion that are given by this act to increase the damages found by verdicts in actions upon the case. Sec. 59. And be it further enacted. That dam- ages for the infringement of any patent may be recovered by action on the case in any circuit court of the United States, or district court ex- ercising the jurisdiction of a circuit court, or in the Supreme Court of the District of Columbia, or of any territory, in the name of the party in- terested, either as patentee, assignee, or grantee. And whenever, in any such action, a verdict shall be rendered for the plaintiff, the court may enter judgment thereon for any sum above the amount found by the verdict as the actual damages sus- tained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs. [Repealed June 32d, 1874.] Act approved June 23d, 1874. Sec. 4900. It shall be the duty of all patentees and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient no- tice to the public that the same is patented ; either by fixing thereon the word "patented," together with the day and year the patent was granted ; or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is cur closed, a label containing the like notice ; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendaBt was duly notified of the infringement, and con- tinued, after such notice, to make, use, and vend the article so patented. Sec. 4919. Damages for the infringement of any patent may be recovered by action on the case in the name of the party interested, eitlier as patentee, assignee, or grantee. And whenever, in any such action, a verdict is rendered for the plaintiff, the court may enter judgment thereon for any sum above the amount found by the ver- dict as the actual damage sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, "together with the costs. Sec. 4921. The several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions ac- cording to the course and principles of courts of equity, to prevent the violation of any right se- cured by patent, on such terms as the court may deem reasonable ; and upon a decree being ren- dered in any such case for an infringement, the complainant shall be entitled to recover, in ad- dition to the profits to be determined accounted for by defendant, the damages the comj)lainant has sustained thereby ; and the court shall assess the same or cause the same to be assessed under its direction. And the court shall have the same power to increase such damages, in its discretion, as is given to increase the damages found by verdicts in actions in the natui'e of actions of trespass upon the case. Cases. 1. Damages for infringement of a patent granted by a private act can only be recovered from the time that defendant is notified of his infringement. Evans v. Weiss, 2 Wash. 342. — Wash. 1809. 2. Where the patented thing has been made only, the rule is to give nominal damages. Whittemorey. Cutter, 1 Gall. 429.— Story, 1813. 8. Counsel fees and expenses of witnesses, be- 206 DAMAGES AND PROFITS. yond taxable costs, are not recoverable %s dam- ages. — lb. 4. Mere making oi a patented thing warrants nominal damages only. In case of use, the dam- ages are the value of such use. Whittemore et al. V. Cutter, 1 Gall. 478.— Stoky, 1813. 5. The rule of damages for a jury is the actual damage sustained by the plaintiffs. The court can treble them. (Sec. 5, act February 21st, 1793.) Oi-ay et al. v. James et al., 1 Peters' C. C. 394.— Wash. 1817. 6. It seems that damages may be recovered for the use of an invention which only becomes of value through the subsequent additional inven- tion of another. (Doubted in Whiting v. Em- mett, 1 Bald. 303.)— JJ. 7. Where the defendant is the maker and owner of the patented device, the rule of (single) damages is the amount of profits actually re- ceived by the defendant. Lowell v. Lewis, 1 Mason, 183.— Story, 1817. 8. " Le(; the damages be estimated as high as they can be conveniently." — JJ. 9. In case of user the rule of single damages is the actual damage plaintiff has sustained by reason of the defendant's use. Evans v. Het- tick, 3 Wash. 408.— Wash. 1818. 10. " The plaintiff is entitled to be compen- sated for tTie da/mage he has sustained." It seems that when no evidence is laid before the jury, the damages will be nominal. Kneass v. Schuylkill Bank, 4 Wash. 9.- Wash. 1820. 11. " The jury are at liberty, if they see fit, to allow the plaintiff as a part of his actual dam- age, any expenditure for counsel fees or other charges, which were necessarily incurred to vindicate the rights derived uader his patent, and are not taxable in the bill of costs. " Boston M'fg Co. V. Mske etal., 3 Mason, 119. — Stoky, 1830. 12. " Where counsel on both sides are content with a measure prescribed by themselves, it is not usual or necessary for the court to interfere at all." Earle v. Sawyer, 4 Mason, 1. — Story, 1825. 13. "The price of the machine, the nature, actual state and extent of use of the plaintiff's invention, and the particular losses to which he may have been subjected by the piracy, are all proper ingredients to be weighed by the jury. " —lb. 14. If plaintiff has not proved his damages, the jury are not to supply the defect. Whitney et al. V. Emmett et al., 1 Bald. 303. — Hopkin- soN & Baldwin, 1831. 15. Latitude is given to the jury in estimating actual damages. They may infer the damage of \ the plaintiffs from the profit of the defendants. Reduction of prices and injury to reputation from poor goods may be taken into account when the evi Harlem S. E. Co., 4 Fish. P. C. 1.— Nelson, 1855. 69. " No fixed and certain rule can be estab- lished applicable to all cases, but the statute has itself fixed the general rule which must gov- ern a jury in their estimating damages. They are to give the actual damage which the plain- tiff has sustained — no vindictive or speculative damages, but such damages as the plaintiff, by his proofs, has shown to the satisfaction of the jury that he has actually sustained by the in- fringement of his patent." Ransom et al. v. New York, 1 Fish. P. C. 353.-.Hall, 1856. DAMAGES AND PROFITS. 311 70. Where the infringement is by a city, of a patent for flre-engines, the benefits which have actually accrued to the city are to be taken into consideration. — lb. 71. The jury are to give the plaintiff " the actual damages he has sustained by the infringe- ment, whether such infringement was an inten- tional violation of the patent or not, and in esti- mating the actual damages the jury is to give the value of such use during the term of the il- legal user." Wintermute v. Redington, 1 Fish. P. 0. 339.— WiLLSON, 1856. 72. As to damages " the only precise rule furnished by the law is, that the patentees are entitled, when a verdict is given in their favor, to recover the actual damages they have sustained by the infringement of their patent. No legal measures being furnished by which that amount can be ascertained, the subject is left to the sound sense and judgment of the jury. There can be rarely occasion for vindictive damages, because almost invariably the infringement arises out of some colorable claim of right by the party sued. " The quantity made by the defend- ant's infringing machine, and the profits thereby saved to him, are fair subjects for consideration, but are hardly to be relied upon as fixing with any certainty either the quantity of work done or its value. Oarr v. Biee, 1 Fish. P. C. 198. — Betts, 1856. 73. "An infringement of the . . . right of a patentee or his assignee, implies a right to sue for and recover damages for the injury. The general rule of damages is the amount of profits made, by the person infringing the patent, from the unlawful use of the improvement. On the theory of the patent laws, this measures the loss sustained by the owner of the patent. There may be circumstances of aggravation attending the infringement that will justify a jury in re- turning damages beyond the amount of profits derived from it." Wayne v. Holmes, 1 Bond, 37.— Lbavitt, 1856. 74. " If the patentee has an established price in the market for his patent right, or what is called a patent fee, that sum, with the interest, constitutes the measure of damages. Of course the defendant cannot complain of that, because, if in fact he is an infringer, he has been using the property of the plaintiff, and whatever profits he has made- out of its use belong, in equity, to its owner." Siekels v. Borden, 8 Blatch. 535.— Nelson, 1856. 75. The patented machine being an improve- ment in saws, the court directed the jury to "assess the actual damages the plaintiff has sustained, by the use of his improvement, dur- ing the term of the illegal user, or the amount of the profits actually received by the defendant during the time he ran his mill with the im- provement of the plaintiff. To apply this rule, take one day as the measure of time, and so many thousand feet of lumber as the result of that time. Having fixed the day and feet, and price in the market at the time the saw was thus used, you can arrive at a satisfactory conclu- sion." PageY. Ferry, lYhsK P. C. 398.— Wil- KiNS, 1857. 76. Complainant's patent being for a machine for making mouldings, the court said : "The rule of damages is the profits which have been derived to the defendants from making mould- ings by means of his machine over any other mode which the defendants had the right to adopt, deducting from them, as is agreed, ten per cent." Serrell v. Collins et al., 4 Blatch. 61. — Ingbrsoll, 1857. 77. Where the infringement is free from any aggravating circumstances, and defendants sup- posed they were protected by the patent of an- other, "they will be held responsible only for the profits realized after a deduction of all ex- penses, etc., in carrying on their operations." Pitts V. Edmonds et al., 1 Bissell TJ. S. C. 168. — McLean, 1857. 78. " The profits recoverable in a case for a violation of an exclusive right under a patent, are not regarded in the light of liquidated dam- ages. The right to recover rests upon the principle that the party complained of has un- lawfully appropriated to himself the benefits of an improvement or discovery which belongs ex- clusively to another, and that so far as he has made profit by such appropriation, he is liable to the party injured. This profit is as- certainable by evidence, and does not, like the claim for damages in an action for tort, rest in the discretion of a court or jury." Jenkins v. Q-reenwald, 1 Bond, 136. — Leavitt, 1857. 79. Where the defendant had the right to con- struct the patented machine within certain limits, " implying a right to sell outside of such limits, but without any right to use or authorize others to use the machine, the injury sustained by the complainant," where the machines are sold out- side of the limits as carrying with them the right to use, " is to be measured by the profits which, as a manufacturer and not as a patentee, " defend- ant realized. — lb. 80. Where, during years of infringement, different parties have at different times been con- cerned in the infringement, the decree will ap- portion the damages in accordance therewith. 213 DAMAGES AISTD PROFITS. Tatftam et al. v. Lowler et al., 4 Blatch. 86. — Nelson, 1857. 81. "The practice ... in equity is to take tlie account down to the time of the hearing be- fore the master, if the infringement continues to that period, tliereby preventing tlie necessity and expense of a new suit." — lb. 82. The patent in question being for an im- provement in malsing lead pipe, the master ar- rived at defendants' profits by taliing the diflEer- ence between tlie price of pig lead and the price of lead pipe, and deducting therefrom the costs of manufacturing the pipe, and he added inter- est to the time of his report. The report was confirmed. — lb. 83. The rule of damages is not what defend- ants could have realized with reasonable dili- gence, but what in fact they did realize. Dean V. Mason etal, 20 Howard, 198.— Sup. Ct. 1857. 84. ' ' There is no unbending or unyielding rule of damages, though that usually recognized as the true rule has been to give to the plaintiff as damages the amount of profits which the de- fendants have derived from the use of the plain- tiff's improvement, not the amount which they might have realized, or which they made from the use of improvements other than those of the patentee, but what they actually did make from the machine as patented." Bella v. Daniels et al., 1 Bond, 212.— Ltsavitt, 1858. 85. Where plaintiff's patent was for an im- provement in the mode of applying the waste heat of blast furnaces and steam boilers, the court instructed the jury that the value of the coal saved by the use of the plaintiff's invention was a satisfactory basis for an award of dam- ages. — lb. 86. Although there are cases where a license price is a criterion of damages, there are few instances where an invention is pirated that the patentee ought to be concluded by a former offer to sell.— ZS. 87. The object of the statutory provision au- thorizing the court to treble the damages " was to remunerate patentees who were compelled to sustain their patents against wanton and perse- vering infringers. There may be, and doubtless are cases in which the discretion vested in the court for this purpose should be exei-cised, but it would hardly seem that the spirit of the act was intended to include suits brought upon an expired patent, which are merely cases of collec- tion, the sole object being the recovery of dam- ages." Bell V. McOullougli et al., 1 Bond, 194. — Lbavitt, 1858. 88. Where, on the trial of a case at law, com- plainant is seeking mainly to establish his right. and states that the amount of damages recovered is not a material matter, the jury will not be ex- pected to give large damages. Johnson v. Boot, 1 Pish. P. C. 351.— Spragub, 1858. 89. " Where a patent has been violated it necessarily follows that the plaintiff is entitled to some damages. The act of violation is proof that he is entitled to some damages, and when the question of damages is not proved, the rule is that the jury give nominal damages ; but if the plaintiff intends to claim more than nominal damages, he, being entitled to recover his actual damages, must satisfy the jury what his actual damages are." Poppenhusen v. iV. T. Outta- Pereha Comb Co., 4 Blatch. 184.— Ingbrsoll, 1858. 90. Plaintiff's patent being for a mode of mak- ing brass kettles, the court charged the jury that one element of damages was the difference be- tween the cost of manufacture under the old hammering process and the plaintiff's patented process, also that another element was the differ- ence in the value of the article made by this different process. Waterbury Brass Oo. v. New York & Brooklyn Brass Co., 3 Fish. P. C. 43.— Ingbrsoll, 1858. ■'^ 91. "Upon this question the general rule is, that the patentee or his assignee, in case of an infringement or an appropriation of his inven- tion by another without his license, the patentee or assignee, as the case may be, is entitled to the actual damages which he has sustained by reason of this infringement. It is often, indeed almost always, an exceedingly difficult question to arrive at, upon any certain or satisfactory, data. The theory, or the principle in respect to the damages, is that a third person who adopts, ap- propriates, or uses the improvement of another interferes with his custom, his monopoly, or, rather, property (for it is not a monopoly, being the fruits of his own mind), and affects the bene- fits which he would otherwise be entitled to ; and the jury should look into the case with a view to ascertaining the actual damages which the patentee under such circumstances has sus- tained. The rule of law excludes any exagger- ated or vindictive damage, which is sometimes allowed in cases of wilful trespass." Smith et al V. Eiggins et al., 1 Fish. P. C. 537.— Nel- son, 1859. 92. One view which may be taken of the ques- tion of damages is this : " The benefits and ad- vantages, whatever they may be, if there are any, derived in the use of the plaintiffs' improvement over the old modes practised and in use, and this is the useful result, if any, consequent upon the new invention over old modes. If it can be DAMAGES AND PEOFITS. 313 shown that there are benefits and advantages de- rived by the use of the new mode over the old, these are such as are to be taken into considera- tion upon the question of damages." — lb. 93. Although estimates and opinions are not always reliable or very certain, they are compe- tent and admissible on the question of damages, and proper to be talsen into account. — lb. 94. " When ascertainable, the defendants' profits are the proper rule of damages, "—/ft. 95. The damage in some cases " will be the amount of profits that the defendant has made." —lb. 96. Although the principal thing desired by the plaintiff be the establishing of his right, it is competent to give him damages that will com- pensate him for the actual damages sustained by the infringement. Morris v. Barrett et al. , 1 Bond, 254.— Lbavitt, 1859. 97. The patentee is entitled to such actual damages as he has sustained. " The actual damages are the profits the defendant has made. ' ' Gonover v. iJajjp, 4 Fish. P. C. 57. — Ingehsoll, 1859. 98. " Counsel fees are not a proper element for the consideration of the Jury In the estima- tion of damages in actions for the infringement of a patent right." Teeseetal. v. Huntington et al., 23 Howard, 2.— Sup. Ct. 1859. 99. " Where a plaintiff is allowed to recover only actual damages he is bound to furnish evi- dence by which the jury may assess them. If he rest his case, after merely proving an infringe- ment of his patent, he may be entitled to nomi- nal damages but nothing more. He cannot call on a jury to guess out his case without evidence. Actual damages must be calculated, not imag- ined, and an arithmetical calculation cannot be made without certain data on which to make It." New York v. iJansoro «i aZ., 23 Howard, 487.— Sup. Ct. 1859. 100. Where only nominal damages are claimed, only nominal damages will be given. Judson v. Cope et al., 1 Bond, 327.— Leavitt, 1860. 101. The plaintiff who prevails is entitled to " the actual damage sustained by him by the defendant's infringement of his right." Mat- thews V. Skates et al., 1 Fish. P. C. 602.— Jones, 1860. 102. Where there are no data given for an award of damages " the whole subject is within the discretion of the jury. " Judson v. Moore et al, 1 Bond. 285.— Lbavitt, 1860. 103. " If the inventor's profit consists neither in the exclusive use of the thing invented, nor in the monopoly of making it for others to use, but in having a general use of it by all who are willing to pay him the price of his license, then the non-payment of the license fee by the in- fringer is the only wrong done to the patentee. " Limngston et al v. Jones et al., 3 Wall. Jr. 330. — Gribr, 1861. 104. " The only cases in which the measure of the patentee's damages is the amount of the in- fringer's profit are, when the invention is of some new machine, or a new form of any kind of known machine which, as a distinct sjDecies of machine or manufacture, is more valuable, or can be put into market cheaper, so as to super- sede or exclude other machines or manufactures of the same genus, and where the profit of the patentee consists in a complete monopoly of the right to make and vend the new machine or manufacture as a unit and in the exclusion of all competition. In such cases the only meas- ure of damage in a court of equity is the amount of profits made by the infringer, and it is in such cases that the injured party should seek the remedy in a court of chancery, where he can have a decree for an account and an injunction to protect his monopoly." — lb. 105. " It is plain that a patentee, whose in- vention is only valuable because used by all who pay a license fee, and who suffers no other wrong than the detention of such fee, has fixed his own measure of compensation, and needs none of the remedies which it is the duty of the chan- cellor to give for his protection. An injunction would do him no good, an account is not wanted, and the only remedy to which he is entitled being a judgment for a given sum of money with interest, a court of law is his proper resort, where also he may recover a penalty to the extent of treble damages, if the judge sees fit to inflict it." — lb. 106. " Does the value of a patent to its own- ers consist in the close monopoly of the right to make and sell this species of ' device ' as one in- dividual machine ? Has it peculiar character- istics which distinguish it from other machines of the same genus, and which give it a peculiar value in the market ? If so, the complainants have a right to demand that the defendants, who have infringed their exclusive right to make and sell this peculiar machine or manufacture, are justly liable to refund all the net profits made by such infringement. If, on the contrary, the patent is for some addition or improvement on an old and well-known implement, or some sepa- rate part or device thereof of small importance compared with the whole, if the license to use the improvement or addition was sold as sepa- rate and distinct from the whole machine, the measure of damage would be the price of a li- 214 DAMAGES AND PEOPITS. cense, and not the profit made by the exclusive right to make and sell the whole machine. '' — lb. 107. " The Janus-faced lock is a specific arti- cle (although of the genus lock) known in the market, having peculiar value ; and the . . . vi),lue of the monopoly granted by the patent consisted in the exclusive right to manufacture this peculiar machine without any competition, and have all the profits of such monopoly. The respondents have made large gains by trespass- ing on the rights of the complainants. The profits they made by this trespass justly belong to the true owner. They have partaken equally with the complainants in the profits of the mo- nopoly granted to them alone, without license and in defiance of their rights. The only meas- ure of the redress to which the complainants are entitled is an account of the actual profits made by respondents. . . . The machine being a unit, a specific article well known in the market, having peculiar value because of the jDatentee's discovery or invention, the attempt to arbitrarily divide the profits of the monopoly of the whole machine among its parts is without precedent." —lb. 108. "Where the value of the monopoly grant- ed by the jjatent consists in the exclusive right to manufacture the patented thing, the com- plainants are entitled to the actual profits made by respondents, and those are ' ' all that can be made matter of account in equity." — lb. 109. It is the duty of the jury " to give the plaintifE such actual damages as he has proved ... he has sustained at the hands of the defendants." By actual damages is meant " damages in fact, and not what is sometimes called in the law vindictive and exemplary damages." Ooodyear v. Bishop et al., 3 Fish. P. C. 154.— Shipman, 1861. 110. " Although the plaintiffs might have made $37,000 profits if they had made and sold these goods, which the defendants manufactured and sold, that is by no means conclusive evidence that $37,000 is the actual damages they are en- titled to recover. " — lb. 111. "Where plaintifE makes his patent valu- able by licenses for which he has a uniform price, the license fee is one proper measure of damages.— J6. 113. For an example of interest added to dam- ages from the time of infringement see — . lb. 113. In some cases a measure of actual dam- ages unattended with difficulty is to give the plaintifE whatever profits the defendants have received from the use of the invention. Ooxe v. Qriggsetal., 1 Bissell, 862. — Drummond, 1861. 114. In the case of such a patented machine as a sower, the clear and simple rule of damages is "to ascertain what pecuniary profits or bene- fits the defendant has derived from the use of the invention of the plaintifE. " Case v. Brown, 1 Bissell, 382.— Dbdmmond, 1863. 115. In an aetion at law for infringement of a patent, damages can only be given for the time prior to the date of the writ. Subsequent dam- ages may be recovered in another action. Hay- deny. Suffolk M'fg Go., 4 Fish. P. C. 86.— SPRAGtIB, 1862. 116. In awarding damages the jury is not to look at the financial situation of either party to the case. — lb. 117. "Where there are two patents in suit, one for an article of manufacture, and one for a ma- chine for making that article, the rule of dam- ages as to either or both patents is defendants' profits on its sales of the infringing article. Magic Ruffle Go. v. Douglas et al., 2 Fish. P. C. 830.— Shipman, 1868. 118. ""Where an inventor has invented only an improvement, and there is a violation of his right under his patent to use that improvement in connection with the invention of others, or in connection with a machine previously known and used, in either case his damages must be limited to the value of his improvement in con- nection with the other elements of the machine. This is a subject in regard to which it may be difficult to give definite proof ; but the difiicully does not change the legal principle which ap- plies. Such proof must be given. " Burdell et al. V. Denig etal., 2 Fish. P. C. 588. — Swayne, 1865. 119. ""When the pla,intiffs show . . . that they intend to keep a close monopoly, and there was no proof to the contrary, then, undoubted- ly, according to all the authorities on the sub- ject, they were entitled to recover damages ac- cording to the principle of profits." — lb. 130. ' ' "Where, from the evidence, the damages are to be calculated upon the basis of profits, it is incumbent on the plaintiff to prove those profits as the basis and data of that calculation, and where, from the state of the evidence, the other principle applies — compensation for a license fee — the same principle of evidence appUes, and the same result ensues, the burden of proof rests upon him."— J6. 131. If the use of one patented invention in- volves the use of another patented invention, the damages to be recovered as regards the first men- tioned, must be confined to the utility of the first mentioned. Sayles v. Chicago & N. W. B. E. Co., 1 Bissell, 468.— Drummond, 1865. 133, The value of the patent is not a proper DAMAGES AND PEOPITS. ai5 subject for consideration in estimating damages. Tlie value of the use of the improvement over old methods is proper for consideration. Suffolk Co. V. Ewyden, 3 Wall. 315.— Sup. Ct. 1865. 133. " The jury, in ascertaining the damages . is not to estimate them for the ■whole term of the patent, but only for the period of the infringement. ' ' —lb. 134. Plaintiff and defendants owned territorial rights under the same patent for fanning ma- chines. It was proved that defendants had sold seven machines within plaintiff's territory, and that the plaintiff's profit was $15 a machine. The jury had given a verdict for $105 damages, and there were no facts in evidence to show the circumstances surrounding the infringement sales. The court refused to treble the damages. Seliwarzel v. Ilolenslmde et al., 3 Bond, 39. — Lbavitt, 1866. 135. " It has happened, and may occur again, that a meritorious inventor of a valuable im- provement, after spending years of patient thought and toil in making it practically useful, and obtaining a patent for it, has been wantonly and unjustly pirated upon, and compelled, for the establishment of his rights, to engage in long, vexatious, and expensive litigation, in which, at last, the sum that may be awarded by the verdict of a jury may be wholly inadequate as a compensation for the wrongs and injuries he has sustained. In such a case the instincts of justice would demand of a judge that he should exercise the discretion invested in him by law, by trebling the damages, and thus, as far as practicable, doing justice to one who, from the great utility of his invention, may be entitled to the name of a public benefactor."— /J. 136. In an action against the United States in its Court of Claims for the use of a patent on locks for mail -bags u.sed by the Government, the contract price of the locks, if they had been made by the patentee, was $94,379 ; of that sum the court allowed as profits thirty-three and one third per cent, that is, $31,316, and from this deduct- ed $4000 for a factory, leaving a balance of $27,- 436. Nock V. United States, 3 Nott & Hunting- ton, 451.— NoTT, 1866. 137. Complainants' patent was for a machine for repairing railway rails. Defendant having infringed in the repairing of three thousand and forty-one rails, the average length of weld being 17.4 inches per bar, the court awarded as dam- ages $1393. T'trrill et al. v. Illinois Central Bailroad Co., 3 Bissell, 66.— Drummond, 1867. 138. The patent in suit was for an amalgamat- ing barrel. Defendant had made and used twenty-three of them— twenty-one before the is- sue of the patent and two afterward. Twenty- five hundred dollars were awarded as damages. Brodie et al. v. Ophir Silver Mining Co., 5 Saw- yer, 608.— Field, 1867. 139. " The act of Congress of July 4th, 1836, does not compel the court to treble the actual damages as did the act of 1800. The power to increase the actual damages now rests in the dis- cretion of the court, to be exercised in view of all the circumstances of the case. It should only be exercised to remunerate parties who have been driven to litigation to sustain their patents by wanton and persistent infringement." — lb. 130. "A party can sue at law for damages for an infringement, but in equity he can obtain no such damages. His right may be maintained and protected for the future, and an account may be required." Hoffheins et al. v. Brandt, 3 Fish. P. C. 318. -Giles, 1867. 131 . The improvement in suit being Whitney's process for making car-wheels, the master re- ported defendant's profits to be $90,000. He also reported that defendant manufactured car- wheels without annealing, that these latter wheels sold for the same price as the annealed, and cost twenty-five cents less apiece. The court held that the new step or feature of Whit- ney's improvement was the reheating of the wheel to be annealed, in all else the process be- ing old, and said ; " It might as well be said that the plaintiff was entitled to the entire profit of the running gear, other than the wheel, or upon the entire car ... as the entire profit made on this wheel." Whitney v. Mowry, 4 Fish. P. C. 141.— SwATNB, 1868. 133. Query. Whether, when some slight fea- ture of improvement gives the thing its whole marketable value, the profit upon the entire article ought not to belong to the plaintiff? —lb. 133. " An action on the case for damages brought under Section 14 of the act of July 4th, 1836," is " the only species of suit in which the plaintiff can recover damages for the infringe- ment of a patent. The plaintiff in a suit in equity on a patent does not recover damages." Goodyear et al. y. Allyn et al., 6 Blatch. 33. — Blatchford, 1868. 134. In taking an accounting the master is " not limited to the date of the decree. In such cases it is proper to extend the account down to the time of the hearing before him, unless the infringement ceased prior to that time. The rights of the parties are settled by the decree, and nothing remains but to ascertain the dam- ages and adjudge their payment. The practice saves a multiplicity of suits, time, and expense. 216 DAMAGES AND PKOFITS. and promotes the ends of justice." Rubber Co. V. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 135. The defendant company manufactured articles covered and articles not covered by the patent in suit, keeping no separate account as to their respective cost and profit. The master applied the principle of apportionment as fol- lows : ' ' The gross amount of sales of articles of both classes was $3,648,131.49. The gross amount of sales of articles covered by the patent, $1,899,696.78. Gross amount of profits, |349,- 520.02. Proportion of profits due to articles covered by the patent, $350, 757. 72. " "In mak- ing up the account the master allowed deduc- tions from profits for bad debts, for rents and interest paid, debiting rents and interest received ; he allowed for the market value of the materials on hand when the infringement began, for the cost of those acquired afterward to carry on the business, and for the usual salaries of the mjm- aging ofiicers." The master reported " Large amounts appear by the books to have been ex- pended in the repairs of building and machin- ery, and in the purchase of new machinery, tools, and fixtvfres. No further allowance is made by the master for wear and tear, and de- preciation." " He refused to allow the extraor- dinary salaries which it appeared by the books had been paid, being satisfied they were divi- dends of profit under another name, and put under that guise for concealment and delusion. The allowance for repairs and other items men- tioned in this connection doubtless exceeded the wear and tear which could have occurred dur- ing the time of the infringement. The market was a rising one. The defendants had the bene- fit of it as to those which were tainted by dishon- esty." " He refused to allow the profits due to elements not patented which entered into the composition of the patented articles. There may be cases in which such an allowance would be proper. This is not one of them. " " He refused to allow the manufacturers' profits and interest on the capital stock. This was correct. The profits made in violation of the rights of the complainants in this class of cases, within the meaning of the law, are to be computed and ascertained by finding the differ- ence between the cost and yield. In estimating the cost, the elements of price of materials, in- terest, expense of manufacture and sale, and other necessary expenditures, if there be any, and bad debts, are to be taken into account, and usually nothing else. The calculation is to be nlade as a manufacturer calculates the profits of his business. ' Profit ' is the gain made upon any business or investment when both the re- ceipts and payments are taken into account. The rule is founded in reason and justice. It compensates one party and punishes the other. It makes the wrong-doer liable for actual, not possible, gains. The controlling consideration is that he shall not profit by his wrong. A more favorable rule would offer a premium to dishon- esty and invite to aggression." The master's findings were sustained. — lb. 136. The defendant company did not keep its books in a manner which enabled the master to find what profits were due to the elements of the infringing machines and which were not ; and the master therefore refused the defendant such profits. The court sustained the master, say- ing : " The conduct of the defendants in this re- spect has not been such as to commend them to the favor of a court of equity. Under the cir- cumstances every doubt and difficulty should be resolved against them." — lb. 137. " The jurisdiction of equity is adequate to give the proper remedy, whatever phase the case may assume, and the severity of the decree may be increased or mitigated according to the complexion of the conduct of the ofEender. " — lb. 138. The use of shop-room and tools is a nec- essary ingredient in the expense of manufactur- ing most articles, and should be allowed as part of the expense account. Troy Iron and Nail Factory v. Corning et al., 6 Blatoh. 838. — Ship- man, 1869. 139. An allowance for the use of the circulat- ing capital of defendants' manufacture is proper in getting at profits. — lb. 140. The patent in suit was for machinery for making hook-headed spikes. Defendants in- fringed seven years and a half, making and sell- ing 19,000,000 pounds of spikes, which sold for $700,000, and the master found that they made no profits but rather a large loss. The court deduced the profits through its own estimate of the cost of the rods from which the spikes were made, defendants being the manufacturers there- of, and found a profit of over $8000.— Ih. 141. Interest is to be allowed on profits from the time when infringement stopped down to the date of final decree. — lb. 142. " A patentee whose rights are infringed has his election of remedies. He maytreat the infringer, who illegally appropriates the inven- tion to his own use, making profit thereby, as his trustee in respect to such profits, and com- pel him to account therefor in. equity. In such case, the plaintiff may recover those profits, be they more o" less ; and he can recover no more, however great the damages may be, which illegal DAMAGES AND PROFITS. 217 interference has occasioned. If, on accounting, it should appear that the defendant used the in- vention so unslsilfully tliat lie realized no profit, there could be no recovery. On the other hand, the -patentee may sue at law for the damages which he has sustained, and those damages he is entitled to recover, whether the defendant has made any profit or not. In such an action it is precisely what is lost to the plaintiff, and not what the defendant has gained, which is the legal measure of the damage to be awarded. Under this rule it may often be entirely proper to prove the profits of the ordinary use of the invention, and the demand existing in the market evidenced by sales made, and so, as an element of consideration, show the profits real- ized by the defendant, in order to furnish to the jury all proper materials for determining how much the plaintiff has lost. But . . they are to answer the precise question. How much loss has the plaintiff sustained by reason of the de- fendant's infringement 1" Cowing v. Rumsey etal., 8 Blatch. 36.— Woodruff, 1870. 143. " There may be cases so peculiar that there maybe no means of proving the plaintiil's loss without proof of the defendant's profits, and such proof becomes clearly admissible ; but, even then, the recovery is what the jury shall find to be the plaintifE's loss, not because the de- fendant realized profits, but because, under all the circumstances, the jury infer, as a fact, that but for the interference, the plaintiff would have realized those profits." — li. 144. Where the court is of opinion that the charge to the jury was erroneous in a substantial point, plaintiff may avoid a new trial by remit- ting the damages. — lb. 145. " Different rules for the assessment of damages prevail in suits ui equity from those which are recognized in actions at law, but in all other respects the rights of the parties de- pend upon the same considerations." Hudson V. Draper et al., 4 Cliff. 178. —Clifford, 1870. 146. ' ' The mere infringement of the plaintiff's patent entitles the plaintiff to nominal damages, without any proof as to the actual damages sus- tained." Campbell v. Barclay, 5 Bissell, 179. — Blodgett, 1870. 147. The price for which the plaintiff has sold his rights to certain territory is no criterion by which to arrive at the value of his patent, or the damages sustained by its infringement in the territory retained. — Ih. 148. The amount of damages is not "to be measured solely by the profits which the defend- ant realized by the use of the patented things. He may have conducted his business in so neg lectful a manner as to have made no profits. . . . The true question is. What advantage,, if any, has the defendant obtained or which he might by skill have obtained by using this patented device over the use of the old device or process to obtain the same end ?" — lb. 149. Under the act of July 8th, 1870, " the damages spoken of in Section 55 can have no greater scope or extent than those spoken of in Section 59. The provisions of Section 59, in re- gard to damages, are but a re-enactment of the Ijrovisions on the same subject in Section 14 of the act of July 4th, 1836. Under the latter act it is well settled, by authoritative decisions, that counsel fees paid or incurred by the plain- tiff in an action at law for the infringement of a patent, are not a proper element for the consid- eration of the jury in the estimation of the dam- ages to be recovered in such action. ' ' Bancroft et al. V. Acton, 7 Blatch. 505. — Blatchford, 1870. 150. " At law, the plaintiff recovers damages as such, and the plaintiff must prove the dam- ages sustained by him from the infringement. In equity, the plaintiff may seek and may re- quire an account of the gains and profits derived by the defendant from the unlawful infringe- ment, and these gains and profits he may recov- er." Perry v. Corning et a?., 7 Blatch. 195. — Woodruff, 1870. 151. " The measure of damages, and the con- sequences of a recovery, should have some rela- tion to the mode of remuneration adopted by the patentee, and to the nature of the injury inflict- ed by the infringement. Even the consequences of a recovery with respect to the subsequent rights of the parties may be modified by the measure of damages adopted." Spaukling v. Page et al., 1 Sawyer, 703.— Sawyer, 1871. 153. " If no patent fee has been adopted, then, generally, the patentee is entitled to recover the profits made in the use of the machine. A re- covery of the profits for the use of the machine does not vest the title in the defendant, for the recovery, based upon this rule of damages, can only be for the use of the machine prior to the recovery, and ordinarily does not cover the value of the use for the entire period over which the patent right extends, or the period during which the particular machine is capable of being used. —lb. 153. " While the recovery of the established patent fee covers the entire value, as fixed by the patentee himself, of the use for the entire term, and affords a complete compensation, the recovery of the profits for the use is but for a limited portion of the time, and but a partial compensation. " — lb. 318 DAMAGES AND PKOFITS. 154. The patent in question was for detach- able saw-teeth for circular saws. Complainant worked the patent solely himself. He recovered damages and profits against the makers of the saws, and was refused damages and profits in a subsequent suit against the user of the same saws. — lb. 155. " It is one of the misfortunes incident to aU violations of the rights of individuals, that the injured party is rarely compensated for all the expenses and vexations involved in an en- forcement of his rights through legal proceed- ings. Patentees are not exceptions to this gen- eral rule. "^76. 156. " Perhaps a patentee would not be com- pelled, in a suit for infringement by the use of a patented machine, to accept the established pat- ent fee as the measure of damages, instead of the profits derived from its use." — lb. 157. The saving effected by the use of a pat- ented process forms a proper basis for the award of profits. Tilghman v. Mitchell, 9 Blatch. 1. — Blatchford, 1871. 158. " Damages must be found from the evl dence, not from mere conjecture independent of the evidence." Ca/rter et al. v. Baker et al., 1 Sawyer, 512.— Sawyer, 1871. 159. " The profits made by the defendants in selling the machines are proper to be given as a part of the damages ; for the right to make and vend the patented machine being the plaintiffs' property, the profits resulting from the sale of it ought to belong to them. But as mere profits, the plaintiffs are only entitled to the profits of the sale of their machine as patented. If the defendants have improved their machine, and if any of the profits are properly to be credited to defendants' improvement, they do not belong to the plaintiffs ; but as the defendants have wrong- fully connected the plaintiffs' improvement with their own, and thus caused the confusion of rights, if any portion of the profits are properly to be credited to the defendants' improvement, the burden rests upon them to show atfirma- tively the fact, and how much of those profits ought to be credited to their improvement and deducted from the profits of the sale of the whole machine as improved. " — lb. 160. " The plaintiffs, by the infringement, may have sustained other damages beyond the profits actually received by the defendants. The plaintiffs may have chosen to sell at a higher rate, and they were entitled to sell at a higher price, if they were able to get their ' ma- chines ' off in the market at higher prices." — lb. 161. " The jury should also take into consid- eration the probabilities, as developed by the evidence, as to whether, if the defendants had not infringed the patent, the plaintiffs would have been able to sell as many machines at a higher price, or as many at any price, as have been sold by both plaintiffs and defendants to- gether."— 76. 162. " If the plaintiffs have manufactured machines under the infringed patent, which they could have sold but for the acts of' defendants, in unlawfully selling the same machine, and which, in consequence of such unlawful acts of defendants, they were unable to sell, and were compelled to carry over, they would also be damaged to the extent of the value of the use of the capital invested in such manufactured machines during the time they were compelled to carry them, in consequence of such unlawful acts of the defendants." — lb. 163. " If further improvements have been made in the plaintiffs' machines and subse- quently patented, and if the plaintiffs, during the time of the alleged infringement, manufac- tured and put upon the market" machines " embodying the first patent, they are not en- titled to recover, as damages, that portion of the price which they might have obtained, that is due to the greater value of the machine occa- sioned by combining the last improvement with the first. "—7S, 164. " It rarely happens that all the damages, incidental and remote, resulting from a wrong- ful act, are permitted to be recovered by the law. Only those damages which directly and immediately flow from the wrongful act can be considered. Remote consequential damages must be discarded."— 7 J. 165. Although plaintiffs may, by reason of defendants' infringement, have lost the sale of the patented machines, and as a consequence thereof lost other and additional trade, the damages resulting from the loss of such other and additional trade cannot be taken into ac- ■ count.— 7&. 166. Plaintiffs' patent was for improvement in gang ploughs. The claims were to certain combinations therein. Thereof the court said : " Beyond the mere profits of manufacturing the machine, the profits in the plough must almost necessarily be all due to the patented improve- ment. It is that which fixes the price beyond the expense of manufacturing. At all events, the holder of the patent alone is entitled to make, use, and vend the machine as a whole, and he must, therefore, necessarily, be allowed the profits of the whole machine. " — lb. 167. Although in an action at law the action DAMAGES AND PKOFITS. 219 is in form iort, the verdict should be for actual damages only. Russell v. Place et al., 9 Blatch. 173.— WOODKUFF,' 1871 . 168. Where a court is of opinion that a ver- dict gives too large damages, new trial may be avoided by remission of the excess on the part of the plaintiff. — Ih. 169. Notwithstanding that a jury may have given a plaintiff damages in excess of what they should, the plaintiff may remit the excess and the court then increase the damages under the statute. — IT). ■170. Where an infringement seems deliberate and intentional, though it may have been com- mitted under an erroneous idea of plaintiff's rights, a case is formed for increase of damages under the statute. — lb. 171. A party A bought from a party B the right to use a patented sawing machine within a certain district. A party C had at that time the right to use one machine in that district, and the party A also bought that right from the party C. The party C then proceeded to arrange with still another party for infringe- ment. In suit against C, plaintiffs had a ver- dict for $5000 ; the court increased it to $7500. Peek et al. v. Frame et al., 9 Blatch, 194. — WoODKUFF, 1871. 173. "Profits are to be accounted for by the respondent . . . whenever a decretal order to that effect is rendered against the respondent for an infringement -, and if it appears that the in juries which the complainant sustained by the infringement are greater than the gains and profits realized by the respondent in making and using the invention, and vending it to others to be used as estimated and assessed, then the com- plainant is entitled to recover compensation for the excess of the injuries sustained beyond the amount estimated and assessed for the gains and profits received by the respondent. Actual dam- ages for the injuries sustained by the complain- ant beyond the amount estimated and allowed for the gains and profits made by the respondent, must be assessed in the first instance, but the court, in its discretion, may increase the amount so allowed to any sum, according to the circum- stances, not exceeding three times the amount estimated and assessed as the actual damages sustained beyond the gains and profits realized by the respondent." — lb. 173. It is not an unfair presumption that the defendant's profits are not greater than those made by the complainant and patent owner. Mowry v. Whitney, 14 Wall. 630.— Sup. Ct. 1871. 174. Where an improved process is in ques- tion "it is the additional advantage the de- fendant derived from the process — advantage be- yond what he had without' it — for which he must account." — lb. 175. " It is as true of a process invented as an improvement in a manufacture, as it is of an improvement in a machine, that an infringer is not liable to the extent of the entire profits in the manufacture." — lb. 176. Where the result reached by the process of the paterit in suit is a result which can be reached by a process' or processes old in the art, the measure of damages is that advantage which defendant derived by the use of the patented process, as compared with the use of the old processes. — lb. 177. " The profits which are recoverable against an infringer of a patent are, in fact, a compensation for the injury the patentee has sustained from the invasion of his right. These are the measure of his damages. Though called I profits, they are really damages, and unliquidated until the decree is made. Interest is not general- ly allowable upon unliquidated damages." — lb. 178. In the case of infringement of a patent for a process for making car-wheels, the court said ; ' ' The question to be determined in this case is, Wliat advantage did the defendant derive from using the complainant's invention over what he had in using other processes then open to the public and adequate to enable him to ob- tain an equally beneficial result ? The fruits of that advantage are his profits." — Jb. 179. In the case of infringement of a patent for a process for making car- wheels the court I disallowed interest before final decree, and said : " The profits which are recoverable against an infringer of a patent are, in fact, a compensation for the injury the patentee has sustained from the invasion of his right. They are the measure of his damages. Though called profits, tliey are really damages, and unliquidated until the de- cree is made. Interest is not generally allow- able upon unliquidated damages." — lb. 180. Where defendant's infringement is not wanton, and he has a patent for the improve- ment he practises, those facts ought to relieve him from liability to interest on profits. — lb. 181. Complainants' patent was for a tremolo attachment for organs. The master in his re- port of defendants' profit?, permitted no de- duction on account of the general expenses of the business, holding that it cost no more to handle an organ with a tremolo attachment than one without. The court ruled the other way. Hitchcock et al. v. Tremaine et al., 9 Blatch. 385. — WOODBUFP, 1873. 220 DAMAGES AND PEOFITS. 183. "Where a patent is for such a thing as a tremolo attachment for organs, complainants are not to be deprived of defendants' profits on the attachment because defendants have made no profit on tlie entire organ. — lb. 183. "Where a portion of defendants' profits on a patented device arises from the sale of some- thing not patented, defendants should be permit- ted to prove, and have deducted the amount thereof. —lb. 184. " If the manufacturer of the locomotive engine has sold it at a higher price than he would without the addition of " a " patented cut-off or whistle, or if he has in any way made a saving of expense or a profit to himself by the piracy of" a " patented improvement, the patentee is entitled to recover that profit, without regard to the fact that the infringer has made no profit on the manufacture and sale of the whole machine to which he has attached the patented contriv- ance or mechanism." Oraham et al. v. Mason, 1 Holmes, 88.— Sheplet, 1873. 185. " In making up the account of profits, the master sometimes takes into account the cost of the whole number of infringing mechanisms or contrivances made by the defendant, and the proceeds of all the sales, and gives the patentee the net profits on the whole amount manufactured. This would be a correct rule in some cases, but it would not be just to the patentee in cases where the infringer had made profits on one fraction of the whole number made and sold, and through the defective manufacture or un- skilful management of his busipess had met with losses on a larger fraction, so that a correct account of the whole operation would show a loss on the total manufacture. In such a case, if the patentee, with a full knowledge of all the facts, should bring his bill declaring specifically for the infringement only by the manufacture of those specified mechanisms in the making and selling of which the infringer had made profits, he would certainly be entitled to recover the profits thus made. It is not easy to see why he is not entitled to such profits in a bill counting generally against the infringer, without offset or deduction for losses made in the manufacture and sale of other infringing mechanisms." — lb. 186. " It must be apparent to the most super- ficial observer of the immense variety of patents issued every day, that there cannot, in the nature of things, be any rule of damages, or any rule for estimating profits which will equally apply to all cases. The mode of estimating profits or damages must necessarily depend on the pecul- iar nature of the monopoly granted." — lb. 187. " "Where the patentee is entitled to dam- ages, the rule must be so modified as to afford him indemnity, and give him the actual damage he has suffered by the infringement. Where he is entitled to profits, he is entitled to any profit the infringer has made by the unlicensed use of the contrivance included in the monopoly, and of that alone without regard to profit or loss on the whole structure or machine of which such mechanism forms a part, and without recoup- ment for losses on other infringing mechanisms made or sold." — lb. 188. " It does not affect the question of profits because the infringer could make his infringing contrivance cheaper than he could make the contrivance in the exact form and shape de- scribed in the patent. Nor does the rule with regard to the renovation ami repair of licensed machines apply to cases of infringement." — lb. 189. "Where a manufacturer has paid com- plainant a sum of money to release dealers in the article from claim of infringement, such sum of money is not to be deducted in considering the damages and profits of the manufacturer." ~Ib. 190. An infringer is a trustee, for the benefit of the patent owners, of profits realized by the infringement. Steam Cutter Co. v. Slieldon et al., lOBlatch. 1.— Woodkufp, 1873. 191. Where a suit in equity was begun prior to the act of July 8th, 1870, complainant was held not entitled to damages as such, notwith- standing the fact that his supplemental bill was filed after the passage of the act. — lb. 193. In. a case at law the rule as to damages " is not what defendant made by the infringe- ment, or what he might have made, but it is the loss sustained by the plalntiBfs by reason of the infringement. ... It is proper to inquire how many customers were diverted from plaintiffs by reason of the wrongful conduct of defendant, and what loss plaintiffs have sustained in profits by reason of such diversions. If plaintiffs were ready to supply the market with their patented goods, and their business was hindered or inter- fered with by the competition of defendant, plaintiffs' damages will be the amount of profit which they have lost by reason of such interfer- ence." — lb. 193. " The act of Congress, approved July 8th, 1870, Section 38 (16 Stat, at Large), requires that every patented article sold shall be stamped with the word ' patented,' and the day and year the patent was granted ; and, in any suits for infringement by the party failing to so mark, no damage shall be recovered by plaintiff, except on proof that the defendant was duly notified of such infringement, and continued, after such DAMAGES AND PEOFITS. 231 notice, to make, use, and vend the article patent- ed. So that, if defendant has neglected to prove that his patented article was stamped, or that he gave the notice required by statute, you can- not award him more than nominal damages." —lb. 194; In a suit in equity brought previous to the act of July 8th, 1870, both profits and dam- ages cannot be recovered. Williams v. Leonard et al., 9 Blatch. 476.— Woodkuff, 1873. 195. " What, in good faith, the defendants pay to others as expenses, may be talien as the cost to them of their mantifacture. What they take to themselves are gains. They might, per- haps, have earned and gained as much, or per- haps more, by laboi'ing in some other business, in no violation of the rights of their neigbbor ; but they cannot be permitted to gain either wages or salary by a violation of such rights. ' ' — lb. 196. When the complainant has conveyed away the patents in suit, his recovery terminates with the date of the assignment. Wheeler v. McCormick, 11 Blatch. 334.— Woodruff, 1873. 197. In an action at law where plaintiff gave his consent to the manufacture, damages as to the same cannot be recovered ; " as to the others, if any, he is to receive manufacturer's profits thereon. " Weatlake v. Cartter et al., 6 Pish. P. C. 519.— Treat, 1873. 198. " In cases in which gains and profits alone are to be awarded, . . . where the defendant has used the infringing machine so unskilfully, or in a manner so unbusiness like that he has made no profits, the complainant can recoyer none ; but, on the other hand, the defendant cannot prejudice the complainant by applying the gains arising from the use of an infringing machine, to make up losses on other branches of his business. ' ' CoTwver v. Mera, 11 Blatch. 197.— Woodruff, 1873. 199. A bill of complainants need not specifi- cally pray for damages in order to have damages allowed. The general prayer for gains and profits and other relief is sufficient. Emerson etal. V. Simmsetal., 6 Fish. P. 0. 381.— Nixon, 1873. 300. " Damages follow, by the law, as one of the results of the decree, whether specifically prayed for or not. ' ' — lb. 301. Defendants purchased a patented ma- chine in open market without a knowledge of the patent, used it about nine months solely in their own business, in sawing boards for the manufacture of trunks, and abandoned the use when notified of infringement and before suit. The court awarded as damages $1300, complain- ants' usual license fee. — lb. 303. "Although no rule can be laid down ap- plicable to all cases, there is one which ordina- rily applies' to all cases, . . . where the patentee depends upon license fees or royalties for his compensation for the use of his invention. If he has an established license fee, the amount of such fee is his loss or damage for the use of his invention without a license. ' ' Defendants sought to avoid the application of this rule by showing that they gave up the use of the patented machine as soon as notified of infringement. Thereof the court said : ' ' The defendants seek to avoid the application of this rule in the present case by showing that they ceased to use the complain- ants' invention when apprised of the patent, and substituted other appliances, which rendered the machine quite as effective and useful for their purposes. I do not now listen to the suggestion of complainants' counsel that these substituted appliances are mere mechanical equivalents, for : this is not the proper time and mode of trying I that question ; but surely the defendants are not permitted to get rid of the consequence of a confessed infringement by alleging that they might have used some other machine as advan- tageously as the complainants'." — lb. 303. Complainant's patented invention being in an improvement for preserving fish, com- plainant contended that the enhanced profits realized by defendants on their fresh fish, through their ability to withdraw the balance of stock from the market by the use of the patented invention, should belong to complainant. The court held these profits too remote. Piper v. Brown et al., 1 Holmes, 196.— Sheplet, 1873. 304. "Where profits are recoverable by the owner of a patented invention against an in- fringer, they are such profits or gains as result directly or immediately fi-om the wrongful act of the infringer. Remote and contingent profits or gains, depending upon the result of successful schemes or investments, are never allowed. The resultant profits are ordinarily best arrived at by determinitig the difference between the actual ascertained cost and the actual ascertainable value to the infringer, which value, in case of sales by him, is the price obtained, or the market value of the thing sold. Profits contingent upon future bargains or speculations, or future states of the market, are not estimated and are not re- coverable. " — lb. 305. A.n exception to the finding of a master on a qiiestion of fact where the whole evidence is not reported, and where the finding depended, more or less, on an inspection of a machine by the master, will not be sustained. — lb. 206. "It is not customary, in establishing 223 DAMAGES AND PEOPITS. profits from an infringement, to allow the in- fringing parties compensation for their own time and labor."— /J. 207. When a case is referred to a master for an accounting in profits and damages, it is not for him to go into the general state of the art in order to determine whether defendants' machines infringe, or to consider the general scope and extent of the patent. Turrell v. III. Cent. R. K Co. etal., 5 Bissell, 344.— Drummond, 1873. 208. In an accounting before a master, de- fendants offered to prove that the use of the pat- ented device was unprofitable, and the master refused to admit the evidence. The court sus- tained the master.— TJ. 209. In considering a patent on a machine for repairing railroad rails, it is proper to get at de- fendants' profits by ascertaining what saving they made by using the patented device a? compared with using the least expensive device of the prior art. — lb. 210. When, during a period of infringement, there has been a change of parties as regards a certain line of infringement, the master should make a finding enabling the court to apportion the damages and profits if necessary. — Ih. 211. In a case which went to trial on the plea of Twn-assumpdt, the court said : " The rule in suits in equity, of ascertaining by reference to a master the profits which the defendant has made by the use of the plaintiff's invention, stands on a different principle. It is that of converting the infringer into a trustee for the patentee as regards the profits thus made ; and the adjust- ment of these profits is subject to all the equi- table considerations which are necessary to do complete justice between the parties, many of which would be inappropriate in a trial by a jury." Packet Co. N. Sickles, 19 Wall. 611.— Sup. Ct. 1873. 212. " The measure of the damages to be re- covered against infringers, prescribed by the act of 1836 as well as by the act of 1870, is the actual damage sustained by the plaintiff. Where the plaintiff has sought his profit in the form of a royalty paid by his licensees, and there are no peculiar circumstances in the case, the amount to be recovered will be regulated by that stand ard. If that test cannot be applied, he will be entitled to an amount which will compensate the injury to which he has been subjected by the piracy. In arriving at their conclusion, the profit made by the defendant and that lost by the plaintiff are among the elements which the jury may consider. Where the infringement Is confined to a part of the thing sold, the recovery must be limited accordingly. It cannot be as if the entire thing were covered by tU? patent ; or, where that is the case, as if the 'infringement were as large as the monopoly. Counsel fees cannot be included in the verdict. The plaintiff must show his damages by evidence. They must not be left to conjecture by the jury. They must be proved, and not guessed at." Philp et al. V. Nock, 17 Wall. 460.— Sup. Ct. 1873. 213. " Before the act of 1870, the plaintiff, in equity, recovered of the defendants the profits the latter had made, and, on the law side of the court, his damages ; and it was doubted whether, in equity, he could recover more than the actual profits defendants had made, even though they might, by proper skill, etc., have made more, or even though the plaintiff's loss of profits had been large through defendants' infringement." Putnam v. Sudhoff et al. , 1 Banning & Arden, 198.— Treat, 1874. 214 " It is very far from clear that the pro- visions of Section 39 are not designed to cover profits as well as technical damages ; yet . . Section 55 seemingly maintains the distinction between them." — lb. 215. In a case where plaintiff had failed to stamp his articles with the date of his patent, the decree was for the " actual profits of the plaintiff, to be ascertained by the master, said profits to be confined to the difference between the prices paid by defendants and those at which plaintiff sold the genuine fasteners." — lb. 216. ' ' The ascertainment of the profits made by the use of- . . patented improvements to produce heat by the burning of wet fuel, neces- sarily presents, as the question to be determined. What advantage did the defendants derive in producing heat from burning wet tan by the employment of the patented improvements over what would have resulted to them from the use, to produce equally beneficial results in the way of heat, of other methods for producing such equally beneficial results, open to the public and to them, to be used at the time they used the pat- ented improvements ? This requires that the inquiry should be limited to the production of equally beneficial results in the way of heat, but it does not require that the heat should be that capable of being produced by burning wet tan alone. It extends to any fuel." Placket al. V. TTwrne etal., 12 Blatch. 20.— Blatch- FORD, 1874. 317. In a suit for infringement of a patent for burning wet fuel, and on tlie hearing in dam- ages and profits before a master, a witness was asked whether he had examined and worked any furnaces substantially different from complain- ants' furnace, and worked substantially diffieren DAMAGES AND PEOFITS. 323 from complainants' process which existed at the time defendants constructed their furnaces, and, if he had, what was the economical working of those furnaces as compared with complainants' furnaces and process. This was objected to as Incompetent, but was allowed by the court. — lb. 218. •' An infringer of the rights of a patentee is accountable, in equity, for the profits accruing to him by the appropriation to his own use of the patentee's invention. These profits are properly acquired by the infringer, which right- fully belong to the patentee. He may, therefore, instead of resorting to an action at law to re- cover damages commensurate with the loss caused by the unlawful act of the infringer, elect to treat him a.s a trustee of the profits realized by him, and enforce his accountability for them in that character in a court of equity." Smith V. Baker's Administrators, 1 Banning & Arden, 117.— McKennan, 1874. 219. Infringers are, in equity, to be treated as trustees for the benefit of the patentee, of the profits realized by the infringement. lYoy Iron dcNail Factory Y. Winslow et al., 11 Blatch. 513. — WooDRUPP, 1874. 230. The patent in suit being for an improve- ment in pumps, defendants having been found infringers, and the case having been referred to a master, " the complainants proved the ex- penses of making and selling the pumps in ques- tion, that they were prepared and ready to fill the orders taken by the defendants, and the ' prices at which the pumps were sold by the de- fendants. The master found the damages to be the difference between such expenses and such prices, and reported accordingly." This find- ing of the master was not sustained by the court. The court held that only a special construction of the side chamber was claimed, whereby the same was adapted to use with a valve cham- ber, bolted on the outside. Goulds M'fg Go. v. Cowing et al., 13 Blatch. 343.— Hunt, 1874. 321. " When a patent is for an improvement on a machine, the damages for the infringement of such patent are confined to the profits made by the use of the improvement only, and not by the manufacture of the whole instrument. ' ' — Ih. 333. As to damages and profits, the burden of proof rests upon the complainant " The dam- ages to the plaintiffs or the profits to the defend- ants (they are the same thing) must be proved, like the other points in the case. For all the profits or advantages with which they have been charged (except that precise advantage derived from using the plaintiffs' improvement), the de- fendants may still be liable to other inventors, or they may already have paid for them to those inventors. Upon no principle can the plaintiffs assume that they belong to themselves, and call upon the defendants to disprove this assump- tion." — lb. 333. "Equitable accountability for the un- authorized use of a patented invention proceeds from the hypothesis of a trust. An infringer, although technically a trespasser, is treated as a trustee of the gains resulting from the use of the patent property, and is held accountable accord- ingly. The benefit thus accruing to him is re- garded as the patentee's contribution to his profits and is the primary measure of his ac- countability. To obtain a just account of these profits is, therefore, the special object of the master's researches, but it is not attainable by a uniform pursuit of the same methods." Weth- erill et al. v. New Jersey Kine Co., 1 Banning & Arden, 485.— McKennan, 1874. 334. " Different modes of computation are indicated by different subjects and circum- stances, but they must be appropriate means of ascertaining the actual benefit derived from the use of the patentee's exclusive property. Where the appropriated invention is an art, the simplest method of obtaining this is, perhaps, by a com- parison between it and the cognate means used and available for the production of the same re- sult. The saving in the cost of production due to the new process is a fair measure of the in- fringer's actual profits." — lb: 335. Complainants' patent was for an im- proved process for producing white oxide of zinc. The process could not be practised with- out using a furnace patented to another. Under these circumstances the court awarded as profits one half of the saving which was effected by the use of the process as compared with the cost of the old and common process. lb. 236. For an example of the allowance of in- terest on profits prior to final decree, see — . lb. 337. " It is important to ascertain, if we can, the principle on which the complainant's profits for the illegal use of his patent are to be esti- mated. This obviously depends upon the char- acter of the patented invention, and upon the mode in which the owner chooses to allow the public to use his monopoly, and upon the methods of procedure in the tribunal to which he appeals for redress." American Nicliolson Pavement Co. v. City of Elizabeth et al., 1 Ban- ning & Arden, 489.— Nixon, 1874. 338. " For what profits should the infringer account for the unauthorized use of the inven- tion ? It may be answered generally that the patentee is entitled to a just compensation for the injury which he has sustained from the in- 234 DAMAGES AND PEOFITS. vasion of his rights. How this is to be ascer- tained depends upon the facts and circumstances of eacli case. If the owner's profits consist in having a license fee paid to hiqi by all who use the invention, the amount of the license is his profit ; and when that is paid, the injury done by the use without a license is satisfied. If it consists in the exclusive use of the thing patent- ed, or in the monopoly of making it for others to use, additional considerations are involved. We are then to inquire, What is the character of the invention ? Is it a new machine, or man- ufacture, or composition of matter, whose entire value and usefulness result from the mechanism, combination, or constitutents, which the genius of the patentee has originated, arranged, or pro- duced ? Or is it a mere addition to, or improve- ment of, an existing machine, manufacture, or process, rendering them more valuable and profitable, but not necessary to their use, and which may be used in a less profitable way, without the addition or improvement ? In other words, when profits have gone into an infringer's pocket, he is regarded as the holder of property not belonging to him, but which he must restore to the rightful owner. If the invention in- fringed covers the entire machine, manufacture, or combination used by the infringer, then the whole profits should go to the patentee. If it cover only a part, and there are other and differ- ent elements in the organism, contributing to make up the aggregate profits, then only such proportion should go to him as have sprung from his contribution toward the value of the whole." — lb. 239. Where the " exclusive use or monopoly of the complainant has been interfered with by the defendants, . . . the rule in equity seems to be settled, under such circumstances, that the measure of damages due to the complainant is the amount of profits made by the infringers, unless . . . some portion of the profits have been derived from the use of constituents of the com- bination, not the property of the patentee, and for the use of which he is not entitled to com- pensation. ' ' — lb. 330. Where defendants " had caused a min- gling and confusion of rights, by unlawfully add- ing an improvement of their own to the prop- erty of the complainant, . . it was their duty, and not the complainant's, to prove what por- tion of the profits, if any, ought to be credited to the changes which they had made in the com- bination of the complainant. "—JJ. 331. Where defendants urge, against the find- ing of profits, that there were other forms akin to the patented improvement that they might have used, it is a sufficient answer to say that they did not choose to use such other forms. — lb. 333. In computing defendants' profits due to complainant's invention, those that are not col- lectible are not to be counted. — lb. 333. " While courts will rebuke all attempts on the part of the infringers to cover up and ab- sorb gains and profits, under the names of salary or compensation for personal service, yet, in those cases where defendants have not forfeited the favor of the court by their naked piracy of the rights of others, a reasonable allowance will be made to them from the profits for their care and skill in directing the execution of the works." — lb. 384. For an example of an allowance of $7000 to three defendants for conducting and superin- tending the infringing work, see — . lb. 385. In an accounting defendants contended for an allowance of S6107.50 for an expense of which they did not give the items. The master allowed this, and the court did the same.^7S. 236. In a hearing in damages and profits, de- fendants contended for an allowance of a loss and gain account, without giving items. Both the master and the court denied it. — lb. 337. In making up damages and profits, that which is paid by defendants for the use of an- other patent is properly deducted. — lb. 238. For an example of the disallowance of interest before final decree on damages and profits, see — -. lb. 339. A gave a grant under a patent to B, and subsequently reissued the patent. A infringed B's rights both under the original and reissued patents. It was held that B might recover dam- ages both under the original and reissued pat- ents. — lb. 340. The defendants' conduct in withholding statements which they ought to make will incline the court to resolve any doubts against them on the question of damages and profits. — lb. 241.' The patent in suit was for a picker-stafE motion in looms, and the master reported that the defendants had sold a certain number of looms including the motions, the cost of which was $59.63 ; that the cost of the patented attach- ments was 91 cents for each loom, and that the profit on the entire loom was $5.64 each ; de- fendants insisted that their profit ought to be based on the same ratio to the whole profit that the cost of the attachments bore to the entire cost of the loom, which would give defendants' profit on each attachment as 8-,% cents. It appeared also from the master's report that defendants had sold several hundred pairs of the attach- ments separately at $3 per pair, and 397i other DAMAGES AND PEOFITS. 225 pairs for $534.75. These separate sales were taken as furnishing the measure of defendants' profits as regards the patented attachments wliich were sold upon looms. Defendants had made an improvement of their own by which the at- tachments cost per pair 50 cents less than other- wise, and were allowed this as a deduction. Mason v. Qrahamet al., 33 Wallace, 261. — Sdp. Ct. 1874. 343. The patent in suit was for a " tremolo attachment" to musical instruments. Defend- ants sold musical instruments some of which contained the " tremolo attachment" and others did not. In the ascertainment of defendants' profits they were allowed to prove the geiieral expenses of their business, and to deduct a rat- able proportion from the profits made by the sale of tremolo attachments, and this course was sustained by the court. Tremain et al. v. Hitchcock ei!a?., 33 Wall. 518.— Sup. Ct. 1874. 243. Where a patented improvement is but a part of an entire organization, jand an order re- ferring the case to the master is broad enough to cover profits and damages on the whole struc- ture, such order is too broad , and will serve as a basis for reversing the final decree. Littlejkld V. Perry, 21 Wallace, 305.— Sup. Ct. 1874. 344. In a case where the patent is for an im- provement and not for the entire structure, profits actually realized are usually the measure of unliquidated damages, and interest will not be added. — lb. 345. " Prior to the act of 1870 authorizing the Circuit Court, as a court of equity, to decree the payment of damages in patent cases, damages were not recoverable in equity suits. A bill in equity proceeded, prior to that act, upon the theory that the infringer was equitably bound, as a trustee, to pay to the patentee the profits which had been made by an unlawful use of the invention." Magic Ruffle Co. v. Elm City Co., 13 Blatch. 151.— Shipman, 1875. 246. Where, after suit brought, complainants assign away a portion of the patent in suit, the award of profits and damages as to such part thus assigned away stops at the date of tlie as- signment. Boomer et al. v. United Power Press Co. et al., 13 Blatch. 107.— Shipman, 1875. 247. " In the inquiry concerning profits, the question is not what could be, but what was pro- duced by the use of the complainants' inven- tion." Webster et al. v. Jfew Br-unswick Carpet Co., 2 Banning & Arden, 67.— Nixon, 1875. 248. The patent in suit was for an improve- ment in looms. Defendant had used 31 looms, with an average productive capacity of 48 yards per day for 308 days, giving an aggregate pro- duction of 153,472 yards. The ordinary loom had a productive capacity of only 30 yards per day, and 31 looms of that liind would have pro- duced in the same 303 days 95,830 yards. The difference, 57,553 yards, was therefore held to be due to the use of the patented improvement ; and as defendant made a profit of 20? cents per yard, tlie profits awarded complainant were $ll,74i;40.— /*. 249. For a case in which interest was not al- lowed on defendant's profits until the final de- cree, see — . lb. 350. " The proper measure of damages is the difference between the value of the improvement used by the defendant, and any otlier like device which was open to him without royalty, or by the payment of less royalty. ' ' Ingels v. Mast, 1 Flippin, 424.— Emmons & Swing, 1875. 351. " A fair construction of Section 55, of the act of 1870, . . . only allows a decree for the damages arising from the specific infringe- ment alleged in the bill of complainant. ' ' Rum- ford CJiemical Works v. Hecker, 3 Banning & Arden, 351.— Nixon, 1876. 253. " When a patentee chooses to use his in- vention himself, and finds his remuneration in the sale of the products of its use, and to prevent others from using his invention, it is his right, and then a recovery of profits and damages will be limited to the profits and damages up to the time of recovery. Such a recovery will not carry with it any right to the future use by the infringer of the invention." Perrigo et al. v. Spaulding, 13 Blatch. 389.— Johnson, 1876. 353. " By Section 4931 of the revised statutes, which is substantially a re-enactment of Section 55 of the act of July 8th, 1870, courts of equity are authorized, upon a decree being entered in any case for an infringement, to award to the complainant, ' in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby. ' Before such jurisdiction was vested in the equity courts, damages could only be recovered by suits at law." Ooodyea/r Dental Vulcanite Co. v. Van Antwerp, 3 Banning & Arden, 353.— Nixon, 1876. 254. " The terms profits and damages, as used in the statute, are hardly convertible. Profits, doubtless, refer to what the defendant has gained by the unlawful use of the patented in- vention ; and damages, to what the complainant has lost."— /i. 255. " It is generally pertinent to inquire how the owner of the patent has seen fit to use his in- vention. He may retain a close monopoly in it, and then the damages are computed by investi- 326 DAMAGES AND PEOFITS. gating the defendant's profits, ■which are reckoned a fair criterion of the complainant's loss ; or he may grant license fees allowing the benefit of his invention to every one who will pay a stipulated price for its use, in which case the amount of the license fee fixed by the com- plainant is usually considered a proper compen- sation in damages, except in those cases where the evidence warrants an allowance of exemplary or punitive damages by reason of a wanton in- fringement. ' ' — lb. 256. The patent In suit was for a dental vul- canite plate. Complainant was accustomed to charge a license fee to dentists of $60 a year. Defendant had used the invention during two successive years. The court awarded $130 dam- ages and no profits. — lb. 257. The patented thing being an improve- ment in watches, the master multiplied the num- ber of infringing watches made by defendants by the profit which complainant made upon his watches, and gave the same as damages. This finding was not sustained by the court. Buerk V. Imhaeuser et al., 14 Blatch. 19. — Johnsott, 1876. 358. " Section 55 of the patent act of July 8th, 1870, substantially re-enacted in Section 4921 of the revised statutes, gives to a successful plaintiff in an equity suit for infringement the damages which he has sustained, in addition to the profits to be accounted for by the defendants. But it by no means follows that, in every case, such damages are in excess of the amount of profits made by the infringer." — lb. 359. "If it appears that the injuries which the complainant sustained by the infringement are greater than the gains and profits realized by the defendants, then the complainant is enti- tled to recover compensation for the excess of the injuries sustained beyond the gains and profits received by the defendants. " — lb. 360. "Where defendants are in good faith man- ufacturing under a patent they are not wilful infringers, and therefore not to be visited with punitive damages. — lb. 361. "It is only actual damages which are proved to have been sustained by the plaintiff that he can, in any event, recover. It is not enough that he may have suffered loss, for he cannot have compensation for conjectural losses. The losses must be proved and not guessed at." —lb. 263. In the assessment of damages against a defendant, manufacturer's profits are to be de- ducted. — lb. 263. " When the inventor charges a royalty or license fee, he isolates the value of the use of his invention, and, separating it from all other things, fixes its value as against himself and in favor of others. If he also makes and sells the machine in which the invention is embodied, there will enter into the price not only the cost of materials and the ordinary profit of manu- facture, but also an amount of additional profit, which is the equivalent of this license fee, and adds to the price that additional sum as compensation for the invention. It is this price of the invention which the inventor is entitled to recover as damages against an infringer ; and in ordinary cases it is this only. Wanton in- fringement may induce other considerations, but such is the measure of damages when the case is simply one of infringement." — lb. 264. In an accounting in damages and profits, an effort to show what the complainant had re- covered in another suit is immaterial. — lb. 365. For an example, of interest allowed upon damages and profits from the date of the mas- ter's report, see — . lb. 266. "In cases where profits are the proper measure, it is the profits which the infringer makes or ought to make which govern, and not the profit which the plaintiff can show that he might have made. . . Profits are not the primary or true criterion of damages for in- fringement in an action at law. That rule ap- plies eminently and mainly to cases in equity, and is based upon the idea that the infringer shall be converted into a trustee, as to those profits, for the owner of the patent which he in- fringes ; a principle which it is very difBcult to apply in a trial before a jury, but quite appro- priate on a reference to a master, who can ex- amine defendant's books and papers, and ex- amine him on oath, as well as all his clerks and employes. On the other hand, . the sale of licenses of machines, or of a royalty established, constitute the primary and true criterion of dam- ages in the action at law. No doubt, in the ab- sence of satisfactory evidence of either class, in the forum to which it is most appropriate, the other may be resorted to as one of the elements on which the damages or the compensation may be ascertained ; but it cannot be admitted . . that in an action at law the profits which the other party might have made is the primary or controlling measure of damages." Burdell et al. V. Denig et al, 92 U. S. 716.— Sup. Ct. 1876. 367. " In settling an account between a pat- entee and an infringer of the patent, the ques- tion is not what the latter has made in his busi- ness, or from his manner of conducting it, but what advantage he has derived from his use of DAMAGES AND PROFITS. 227 the patented invention." Illinois Central Bail- road Co. V. Terrill, 94 U. S. 695.— Sup. Ct. 1876. 268. "In the ascertainment of profits made by an infringer of a patented invention, the rule is a plain one. The profits are not all he made in the business in which he used the invention, but they are the worth of the advantage he ob- tained by sucli use ; or, in other words, they are the fruits of that advantage. " Mem v. Oonover, 11 Of. Gaz. 1111. -Sup. Ct. 1876. 269. In computing defendant's profits where the product of the patented invention works a saving to him, it is not material that his general business is unprofitable. — lb. 270. " Juries, in an action at law for the in- fringement of a patent, are required to find the actual damages sustained by the plaibtifE in con- sequence of the unlawful acts of the defendant. Power is given to the court in such a case to enter judgment for any sum above the amount of the verdict, not exceeding three times the amount of the same, together with costs ; but the jury are strictly limited in their finding to the actual damages which the plaintiff has sustained by the infringement." Birdsall et al. v. Oool- idge, 93 U. S. 64.— Sup. Ct. 1876. 271. " Damages are given as a compensation, recompense, or satisfaction to the plaintiff for an injury actually received by him from the de- fendant. Compensatory damages and actual damages mean the same thing — that is, that the damages shall be the result of the injury alleged and proved, and that the amount awarded shall be precisely commensurate with the injury suffered, neither more nor less, whether the in- jury is to the person or estate of the complaining party." — lb. 272. " Prior to the passage of the act of July 8th, 1870, two remedies were open to the owner of a patent whose rights had been infringed, and he had his election between the two. He might proceed in equity and recover the gains and profits which the infringer had made by the un- lawful use of his invention, the infringer in such a suit being regarded as the trustee of the owner of the patent as respects such gains and profits ; or the owner of the patent might sue at law, in which case he would be entitled to receive, as damages, compensation for the pecuniary injury he suffered by the infringement, without regard to the question whether the defendant had gained or lost by his unlawful acts ; the measure of damages in such a case being not what the de- fendant had gained, but what the plaintiff had lost. . . . Where the suit is at law, the measure of damages remains unchanged to the present time, the rule still being that the verdict of the jury must be for the actual damages sustained by the plaintiff, subject to the right of the court to enter judgment thereon for any sum above the verdict, not exceeding three times that amount, together with costs." — lb. 373. "Damages of a compensatory character may ... be allowed to the complainants suing in equity, in certain cases where the gains and profits made by the respondents are clearly not sufficient to compensate the complainants for the injury sustained by the unlawful violation of the exclusive right secured to him by the patent. Gains and profits are still the proper measure of damages in equity suits, except in cases where the injury sustained by the infringement is plainly greater than the aggregate of what was made by the respondent, in which event the pro- vision is that the complainants shall be entitled to recover, in addition to the profits to be account- ed for by the respondent, the damages they have sustained thereby. ' ' — lb. 274. " Evidence of an established royalty will undoubtedly furnish the true measure of dam- ages in an action at law, where the unlawful acts consist in making and selling the patented improvement, or in the extensive and protracted use of the same, without palliation or excuse ; but where the use is a limited one and for a brief period, as in a case before the court, it is an er- ror to apply that rule arbitrarily and without any qualification." — lb. 275. Aftera court has construed a patent and sent it to a master for an accounting in damages and profits, it is not open to the master to vary that construction. Ruggles v. Eddy et al., 3 Banning & Arden, 627.— Whbbler,. 1877. 376. " The extent of the monopoly must first be correctly defined, then the extent of the in- fringement ascertained, and from that basis the consequent profits or damages found." — lb. 277. Where a master has erred in departing from the construction of the patent as settled by the court, the case will be sent back to the mas- ter for further and proper procedure. — lb. 378. Even if it be conceded that complainants' patented apparatus and process was used by de- fendants, it does not follow that the profits of defendants' business are due to that source. Black et al. v. Munson et al., 14 Blatch. 365. — Hunt, 1877. 279. The patent in suit was for burning wet tan. Defendants, in the use of improvement, saved $5691 in the item of wood. The court held it was not shown that the saving was due to the use of the improvement.— 7 J. 280. If, on a hearing in damages and profits, complainants fail to make a case, it is not ma- 228 DAMAGES AND PEOFITS. terial whether defendants give any or immaterial evidence. — lb. 381. "In an action in equity, . . . profits made by the infringer by the use of the improve- ment constitute the general measure of dam- ages. Sales, or a royalty established, on the other hand, constitute the primary criterion of damages in actions at law ; . . but, in any court, this latter rule can only be applied where there is a fixed and established price at which a license is granted. No price can be said to be fixed, or royalty established, where the patentee varies his price according to the courage or the ability to resist of the infringer, or where there are other circumstances showing the absence of a fixed established fee." — lb. 382. Complainants showed a certain profit on their patented machines, but they did not show how much was due to certain other patents, or how much was manufacturer's profit, and they were given nominal damages only. Bobertson et al. V. Blake, 94 U. S. 738.— Sup. Ct. 1876. 383. " Damages of a compensatory character may be allowed to a complainant in an equity »uit, where it appears that the business of an in- fringer was so improvidently conducted that it did not yield any substantial profits." Ma/rah et al. V. Seymour et al., 97 U. S. 348. — Stjp. Ct. 1877. 384. " To a court which has decided what evi- dence of a particular fact is neoessaiy, it is no answer to say that it cannot be given. The con- sequence of that state of things is, that the party on whom the burden rests must fail." Goulds M'fg Co. V. Cowing et al., 14 Blatch. 315.— Johnson, 1877. 385. "Profits maybe defined to be the net gains of the infringer from the use of the patent- ed invention, while damages are the losses sus- tained by the owner in consequence of the in- fringement." La Baw et al. v. Hawkins et al., 3 Banning & Arden, 561.— Nixon, 1877. 386. " No general rule can be announced to govern the master in taking the account. . . . Sometimes the profits of the infringer are the sole criterion of the actual damage sustained by the patentee, and then a report of the net gains covers the whole ground of profits and damages. In other instances ... it would be the duty of the master, under such a reference, to add to- gether the net gains of the infringer, and the li- cense fee which the patentee has fixed, and to make the aggregate the measure of profits and damages, which the wrong-doer ought to pay." —lb. 387. " A transfer by the owners of their entire interest in the patent, to be paid for by a certain royalty, is not the establishment of the ordinary license fee, by the payment of which any one acquires the right of using the patented inven- tion. ^ It grants a monopoly ; in consequence, the grantees can afford to pay a much larger price for its exclusive use than if they were subject to competition from other licenses. It cannot be invoked as a safe criterion of the measure of the complainants' damages, imless evidence is offered showing that the licensees of the complainants were deprived of the sale of the number of . . . machines which the defendants manufactured and sold." — lb. 388. Where defendants seek an abatement of damages and profits by reason of roj'alty payable to a third party, " the rule for the master on a reference in such cases is to inquire whether the defendants were acting in good faith under an- other patent ; and if he finds they were, to al- low all necessary expenditures incurred in its use. If they are wanton infringers of the com- plainants' rights, and seek to justify their in- fringement by the pretext of working under the protection of some other patent, which, in fact, adds nothing to the efficiency and value of the complainants' invention, other considerations come in." — lb. 289. Where defendants seek abatement of profits and damages by reason of royalties pay- able to a third party, "it is not a question of payment but of liability. If the defendants are liable for such royalty or license fee, it can hard- ly be maintained that the complainants ought to liave the amount, because the defendants have not fulfilled their obligations, and paid the other patentee." — lb. 390. Money paid by defendants for electrotyp- ing and engraving is properly to be allowed as a part of the expense of conducting business. —lb. 391. The patented article was a new orna- mental chain or necklace, a new article of man- ufacture, and the claim in question had been held by the court to be a claim for a chain com- posed of alternate closed links and open spiral links, formed of one or more coils of gold tub- ing. The court held — in considering damages and profits— that this was the case of a new process of manufacture, and that the proper in- quiry was, Wliat was the advantage in bringing the article by the patented process to a state of perfection, over bringing it to the same state by other processes open to the public, and which would be equally beneficial ? Mulford et al. f. Pearce et al, 14 Blatch. 141.— Shipman, 1877. 292. " A party who has earned profits by the infringement of a patent is chargeable as trustee DAMAGES AND PROFITS. 329 for the use of the real owner." Vaughan v. East Tennessee, Virginia & Georgia B. R. Co., 1 Flippin, 621.— Bkown, 1877. 293. The amount of profits on a manufactured article is not invariably, and in all cases, the rule of damages for infringement. Magic Ruffle Go. V. Elm City Co., 14 Blatch. 109, — Shipman, 1877. 294. Where an assignment of a patentee car- ries with it past damages and profits, the as- signee can recover the same. Hamilton v. Rol- lins, 5 Dillon, 495. — Nelson, 1877. 295. The rule of damages at law is the exact damage actually sustained. Sometimes royalty is a measure, and sometimes not. Bice. v. Heald, 13 Pac. Law Rep. 83.— Sawyer, 1877. 296. The complainant made his patent profit- able by granting licenses upon royalty. Had defendants talien a license, their royalty would have been $1400. Defendants' profits amounted to $1916.28, ard this complainant sought to re- cover. Defendants souglit to confine complain- ant to the license fee. Tlie court awarded the profits. Wooster v. Td'jlor et al., 14 Blatch. 403.— Wheeler, 1878. 297. " On many questions of damages, strictly such, the license fees are evidence of damages, and sometimes the limit of recovery of damages, but cannot be evidence, and, mucla more, not a limit of profits to be accounted for." — lb. 298. Defendants cannot escape an accounting in damages and profits by showing that they have ceased to infringe, and by showing that there have been no profits. Bullock Printing Co. v. Jones et al., 8 Banning & Arden, 195. — Wheel- er, 1878. 299. " Gains and profits are the proper meas- ure of damages in equity suits, except in certain cases where the injury sustained by the infringe- ment is plainly greater than the aggregate of what was made by the respondent. Examples of the kind may be mentioned as falling within the exception where the business of the infringer was so improvidently conducted that it did not yield any substantial remuneration beyond ex- penses, and cases where the products of the pat- ented improvement were sold by the infringer greatly below their just and market value, in order to compel the owner of the patent, his as- signees, and licensees to abandon the manufac- ture of the patented product." Brady v. At- lantic Works, 3 Banning & Arden, 577. — Clip- ford, 1878. 300. " Masters charged with that duty may examine the respondent, and, if necessary, in- spect his books ; but it is incumbent upon t)ie complainant to furnish proof of whatever else is necessary to enable the master to make the prop- er computation." — lb. 801. " Actual profits made by the infringe- ment of the invention secured by letters-patent are the profits which the complainant is entitled to recover, excluding those made in the construc- tion of such portions of the infringing machine as are not embodied in the patented mecha- nism. " — lb. 302. In computing profits the general expenses of defendant's business are to be taken into ac- count, and a proper part apportioned to the in- fringing part of the business. — lb. 303. Extra expenses which are actual expendi- tures are to be considered in computing defend- ant's profits.— /J. 804. Interest on profits may properly be re- cused. — lb. 805. Charges for extra work and materials furnished were allowed to the defendant, in con- sideration of which the master required the de- fendent to assign the charges for the same to the complainant. This was sustained by the court. — lb. 806. Before a master the defendant rendered an account of the number pf machines which he had made, some of which he represented as infringing ' ' three claims, . . . and others only the eighth claim." The complainant then al- leged that he had ' ' for many years, to the knowledge of the defendant, exacted and re- ceived from many other persons a royalty of two and a half mills upon all harnesses manu- factured by the use of machines similar to those employed by defendant, " who thereupon admit- ted in writing " the license and the terms of the same as alleged ' ' by the complainant. Here the complainant rested his case. The defendant then offered to verify the statement of his account that a large part of his machines infringed only one of the three claims mentioned in the original decree. The master held this evidence to be in- admissible, and assessed damages for all the ma- chines at the usual rate. The court sustairjed the master. Eendrick v. Emmons, 3 Banning & Arden, 623.— Lowell, 1878. 307. "Expenses of suit are never allowed. . . . Interest may sometimes be added to the profits, but only under peculiar circumstances." Holbrook et al. v. .Small, 3 Banning & Arden, 625.— Lowell, 1878. 308. " The power to treble the damages does not extend to profits in a suit in equity. It is true that under some circumstances a jury may consider the profits in ascertaining the damages, when no better means are at hand, and so it may incidentally happen that in increasing the dam- 230 DAMAGES AND PEOFITS. ages the court is adding to the profits ; but profits are never, of themselves, the measure of damages at law." — /6. 309. The statute " not only expressly author- izes the recovery in equity of the profits result- ing from the use of the invention, but in addi- tion thereto the damages which the defendant would be entitled to recover at law ; and the latter, in the discretion of the court, may also be trebled. The established royalty might be the measure of the mere damages, but it constitutes no element affecting the profits derived by the defendant from the use of the invention. ' ' Knox et al. V. Great Western Quicksilver Mining Go., 6 Sawyer, 430.— Sawyer, 1878. 310. " It is not the profits of a business as a business that are to be considered, but the ad- vantage derived to the infringer in the dimin- ished cost, etc., of carrying on the business by the use of the invention. ' ' — lb. 311. Defendant sought to have the patented device compared, in point of saving and utility, with devices not in existence during a large por- tion of the time covered by the accounting. The court said : ' ' The comparison must be with ma- chines at the time of the infringement, both known and open to the public." — lb. 312. An account of profits and damages should cover all infringements down to the time of tak- ing the account. — lb. 313. The claim in complainant's patent in suit was for ' ' the arrangement of tar paper or its equivalent," etc. In the accounting the master proceeded on the principle that the entire value and usefulness of the pavement laid by defend- ant was due to the use of this process. The court held otherwise, saying that the improve- ment contributed but a small part to the useful- ness of the pavement, and that the value due to the patented improvement must be separately proved. Sehillinger v. Qunther, 15 Blatch. 303. — Blatch. 1878. 314. The complainant's patent in suit was for " ^he arrangement of tar paper, or its equiva- lent, between adjoining blocks of concrete, sub- stantially as and for the purpose set forth." The master gave complainant as special damage $900 as damage on a piece of pavement laid by defendant, wten defendant had underbid com- plainant. This finding of the master was dis- allowed because it was not based upon proof Of the value specifically due to the use of the pat- ented improvement. — lb. 315. " Where the suit is at law, the measure of damages is, that the verdict of the jury must be for the damages sustained by the plaintiff, sub- ject to the right of the court to enter judgment thereon for any sum above the verdict, not ex- ceeding three times that amount, together with costs." Judson v. Bradford et al., 3 Bann. & Ard. 359.— Clifpokd, 1878. 316. " Frequent cases arise where proof of an established royalty furnishes a pretty safe guide for the instruction of the court and the finding of the jury, but cases also arise where it cannot be applied without qualification, as where the patented improvement has been used only to a limited extent and for a very short period. ' ' — lb. 317. The patented thing vpas a cuspidor. During the time of infringement plaintiff sold 90,554 of the patented cuspidors at a loss of $10,335.84, as compared with previous prices ; the master reported that such a reduction in price was, to a great extent, occasioned by the infringement. The master also reported that during the period of infringement defendants sold 1003 infringing cuspidors, which plaintiff would have sold if the defendants had not sold them, with a certain profit. The court rejected the conclusions of the master, saying that the price which plaintiff would have received but for defendants' infringement was a question of fact ; also the amount of reduction, and how much of it was occasioned by the acts of the defendants, and how much of it was attribu- table to the fact that the infringing articles contained the patented feature ; such also was the question as to whether, if the infringing cuspidors had not been sold, the plaintiff would have sold any more than he did, and what i profit he would have made on them and what part of such profit was to be assigned to the patented feature. The court rejected the con- clusions of the master because the evidence was in the shape of estimate, conjecture, and opin- ion. TngersoUv. Musgrove etal., 14 Blatch. 541. — Blatchford, 1878. 318. It cannot be assumed without sufficient evidence that the market for a patented thing is made solely by the patented improvement. That does not follow if such patented thing has driven all olher things of its class out of the market, for energy, diligence, business tact, superior facilities, and skill and fortuitous cir- cumstances, contribute largely to success in the market. Qarretmn v. Clark et al. , 15 Blatch. 70.— Blatchford, 1878. 319. " The patentee must, in every case, give evidence tending to separate or apportion the de- fendants' profits and the patentee's damage.^, be- tween the patented feature and the unpatented features, and such evidence must be reliable and tapgible, and not conjectural or speculative ; or he must show, by equally reliable and satisfac- DAMAGES AND PEOPITS. 231 tory evidence, that the profits and damages are to be calculated on tlie whole machine for the reason that the entire value of the whole ma- chine, as a marketable article, is properly and legally attributable to the patented feature." — lb. 330. If the complainant fails to give adequate evidence as to proiits and damages, defendants are not to be put on their defence in that respect, and it is unimportant whether defendants give competent evidence or no evidence. — lb. 331. Where, upon the coming in of a case from the master, the court awards only nominal damages, the case will not be sent back to the master in the absence of evidence showing good reason therefor. — lb. 832. " After May 10th, 1878, at which time the defendants dissolved partnership, two of the defendants, William G. Gage and Frederick A. Gage, continued to use the device until Novem- ber 1st, 1876, and . . . these two defendants, in conjunction with one Henderson, continued to use it from November ist, 1876, until October 3d, 1877." It was held that complainants were entitled to recover not only the profits made by the defendants, but also, as against William Gage and Frederick Gage, what the former made wlaile they were using the device. Herring et al. V. Gage et al., 15 Blatch. 134. — Wallace, 1878. 333. On the question as to what defendants have made by the use of the complainants' de- vice, evidence as to what other like devices save is important. — lb. 334. " In settling an account between a pat- entee and an infringer, the real inquiry is, What is the advantage which the infringer has derived from the use of his invention ?' If he has de- rived a protit attributable directly to the em- ployment of the invention, the profit belongs to the patentee and is the measure of his recovery. " —lb. 335. " The infringer is, at the election of the patentee, treated as a trustee, and as such re- quired to account for the profits actually made by the use of the patentee's property. It would be a novel defence to permit a trustee, who has made a profit by the use of the money or prop- erty of his cestui que trust, to show that he would have made an equal profit if he had used the money or property of a third person, or if he had used his own money or property. ' ' — lb. 336. " Undoubtedly interest and cost of power enter mtothe account of profits to be ascertained from a given manufacture. Profit is the gain made upon any investment when both receipts and payments are taken into the account. Where interest has been paid upon the capital invested, or where it is to be paid upon borrowed capital, it should be allowed in estimating profits. " — lb. 337. Profits do not usually draw interest with- out a special order of the court. Parks et al. v. Booth, 103 U. S. 96.— Sup. Ct. 1879. 328. Expenses and counsel fees are not to be allowed as damages. —/Z>. 329. " The provision in law which gives a complainant in equity, whose right is estab- lished and has been infringed, the right to re- cover damages in addition to profits, appears to intend that he may have either profits or dam- ages, as may be most for his advantage in the particular case. To this end the profits may be assessed by the master, and, if they prove to be less than the damages, a sum may be added to make up the difference, which brings the decree simply Jo an assessment of damages." Star Salt Caster Oo. et al. v. Grossman et al., 4 Ban- ning & Arden, 586. — Lowell, 1879. 330. "There is ... a noticeable reluctance in the courts to add damages, when the profits are a substantial sum ; and very clear proof is required before the addition will be made." — lb. 331. Where, in a hearing in damages and profits, the counsel employed are not experi- enced in such matters and overlook material points, it is proper that the court call attention thereto and allow the case to be recommitted. — Ih. 333. "The rule is now well settled, that the profits which a plaintiff is to recover must be those only which can be proved to have resulted from his particular improvement upon the ex- isting machine or manufacture, and that the burden of proof is upon him to show what his profit was. The rule, though just, is at times harsh in its operation." — lb. 333. " An established royalty is so clearly and properly the usual measure, in case of articles made and sold, that it would not be departed from without good cause shown."— i 6. 334. A suit for infringement was brought against the seller of patented articles ; there was a pending suit against the manufacturer of the same. The pendency of the latter suit was he]d not to interfere with an accounting in damages and profits in the former suit. Tucher v. Bur- ditt etal., 4 Banning & Arden, 569.— Lowell, 1879. 335. ' ' Reduction of prices and consequent loss of profits, enforced by infringing competition, is a proper ground for awarding damages. The j only question is as to the character and suffi- l ciency of the evidence in the particular case." 233 DAMAGES AND PEOFITS. Sargent v. Tale Lock M'fg Co., 17 Blatch. 24i. — Blatchfobd, 1879. 336. Witnesses estimated the value of com- plainant's patented device in a lock made and sold by defendant at a certain sum. The court rejected this sort of testimony. Sargent v. Tale Loch M'fg Go., 17 Blatch. 249.— Blatchfobd, 1879. 337. In estimating damages and profits, " where there were two factors, the value or proportion of one of which was known and the Other unknown, and which co-operate with each other, they must necessarily be treated as co- equal in their contribution to the general result. ' ' —lb. 338. Where an infringing defendant used the invention of complainant until a subsequent in- vention was made by a third party, it was held equitable to allow complainant for the use of his device, in an accounting, a, sum equal in value to the said subsequent invention during the period the patented device was used by defend- ant. — lb. 339. Where defendant's article became un- salable, and the use of complainant's patented device restored its salable character, there was an advantage which, on proper evidence, might be measured in money value and recovered. — lb. 340. The price paid for a license by an in- fringer after he has been prosecuted does not tend to prove an established license fee. Oreen- leaf V. Tale Lock M'fg Go., 17 Blatch. 353.— Blatchford, 1879. 341. Where two suits are pending for in- fringement, one against the maker of an infring- ing article and the other against the seller, ac- counting will only be ordered in the case against the maker. Harper' \. Oooke et al., 5 Banning & Aiden, 50.— Lowell, 1879. 342. Where one of the defendants has re- ceived nothing, otherwise than as a stockholder of the other defendant, on account of the in- fringement, no decree for the payment of any money can be made against him. Steam Stone Cutter Co. v. Windsor M'fg Go. et al., 17 Blatch. 24.— Wheeler, 1879. 343. "There was nothing in the statutes re- lating to patents, before the act of 1870, provid- ing expressly for the recovery of the gains and profits of an infringement of a patent by suit in equity. The right must have been derived from the application of the general principles of jus- tice, as administered in courts of equity. " — lb. 344. ' ' The patentee owns the monopoly of the patented invention. When an infringer con- certs any part of the monopoly into money or into anything else, the owner has the right to follow his property in its new form. The per- son in whose hands it is has become his trustee ; not because he was ever a trustee of the inven- tion or monopoly, or had any right whatever to dispose of it for the owner, but because he had the money or other thing in his hands, which the owner of the invention had the right to claim because the invention brought it."— lb. 345. Defendants made sales of an infringing machine for profit ; that profit complainant was entitled to have. Defendants made other infring- ing machines at a loss, not selling them. Such loss cannot be deducted from such profits. — lb. 346. Insurance premiums are not to be allowed in computing defendants' profits. — lb. 347. Local taxes are not to be allowed in com- puting defendants' profits. — lb. 348. Where defendants have sold for profit the machine patented to complainant, " the only reason why the orator is entitled to any avails of the sales is, that by the sales the defendants have converted the orator's property into money, which the orator is entitled to have in place of the property. The sale, to be an infringement, so as to entitle the orator to anything more than a mere nominal sum, must be a sale for use." — lb. 349. In getting at the profits of a defendant corporation which had sold infringing machines, the court took the gross sum realized by the de- fendant corporation from its infringing sales and deducted therefrom, first, the cost of the ma- chines ; second, an item for the use of real or per- sonal estate and repairs ; third, salaries of cer- tain stockholders, and fourth, the sum due to the presence of another invention. — lb. 350. Defendants sold an infringing machine with a special guaranty of the right to use, and received therefor |1000 in money and $8000 in notes ; the contract between the defendants and the purchaser was afterward rescinded ; com plainant was given no part of this money as de- fendants' profit. — lb. 351. In computing defendants' profits, the en- tire profit on the infringing article is to be al- lowed " only in a. case where the entire value of the whole machine, as a marketable article, is properly and legally attributable to the pat- entable feature." Qarretson v. Clark et al., i Banning & Arden, 536. — Blatchfobd, 1879. 353. It is " not the province of the master, nor is it the province of the court, to suggest any specific line of proof either as proper or neces- sary. The burden is on the plaintiff to lay a basis, by evidence, for ascertaining the proper profits or damages. If he produces certain evi- dence, and lays a certain basis, all that the mas- DAMAGES AND PKOFITS. 233 ter and the court are to do is to say whether he has made out his case or not. If he has not made out his case, that is all there is to be said." —lb. 353. " A plaintiff is required to separate be- tween the patented part of what the defendant makes and sells and the unpatented parts, and not between such patented part and something which the defendant does not embody in his ma- chine. The distinction is a plain one. ' ' — li. 354. A defendant that has profited by infring- ing a patent cannot be treated as a trustee de son tort. Sayles v. BiehTriond, Fredericksburg & Potomac Sailroad Co., 3 Hughes, 173.— Hughbs, 1879. 355. ' ' A claim to recover profits or damages for past infringement cannot be severed from the title by assignment or grant, so as to give a right of action for such claim, in disregard of the statute. The profits or damages for infringe- ment cannot be sued for except on the basis of title as patentee, or as such assignee or grantee of the whole or a part of the patent, and not on the basis merely of the assignment of a right to a claim for profits or damages severed from such title." Gordon v. Antliony et al., 16 Blatch. 234.— Blatchford, 1879. 356. A rescinded contract between complain- ants and respondent rejected as a measure of damages, and, in default of other evidence, nominal damages awarded. Bussey et al. v. Ex- celsior M'fg Co., 1 McCrary, 161.— Treat, 1880. 357. ' ' Whatever question there might be if the subject was new, it now seems to be settled that savings in cost, by infringement of a patent, may be recovered as profits." Campbell v. James et al., 18 Blatch. 93.— "Wheeler, 1880. 358. By the court : " It is said that the master erred, because the defendant might have used another form of stamp which would not have been an infringement, and that the saving by using the patented invention instead of that would have been much less than the saving re- ported. It does not appear, however, but that such use of the other form would have been an infringement ; and if that appeared, it appears that the other form was not known to the de- fendant, and that the saving reported was in fact saved by substituting the patented improve- ment for what was known and would probably otherwise have been used. The saving, therefore, appears to be wholly due to the infringement." —lb. 359. That the patented invention can only be used in the postal service is not pertinent. " If it was true that because those who can make use of a patented invention could also do without it, would show that no injury resulted to the owner of the patent from such use, and cut off all claim for damages, there are probably few inventions that would sustain claim for damages at all. ' ' — lb. 360. That the saving made tlirough the in- fringement has inured to the benefit of the Gov- ernment, through the act of the defendant, a postmaster, will not save the defendant from paying the same to complainant. — lb. 361. " He could have refused the office, or re- signed it, or have let this invention alone." — lb. 363. The right to recover damages and profits for infringement of a patent is a chose in action. —lb. 363. By the court : " The profits allowed con- sist in money saved from salaries." — lb. 364. Complainant's patent was for a combi- nation of a swing truck with a locomotive. The master held that, " in estimating profits, the com- parison of advantages should be made between complainant's invention and an engine having a rigid truck and forward driving wheels without fianges,'" which " was then in common and un- restricted use," the advantages of complain- ant's invention being obtained thereby. Com- plainant offered little or no evidence, on this point, and the master found that no profits had been realized. Finding sustained. Locomotive Safety Truck Co. v. Pa. R. R. Co., 3 Fed. Eep. 677.— Strong, 1880. 365. Complainant having a fixed royalty for the use of the invention, the master adopted such royalty as the measure of damages. — lb. 366. The " rule is that the measure of profits, as distinguished from damages for which an infringer is responsible, is the aggregate of savings which he has made from the use of the patented invention, above what he would have made in doing the same work by the use of any other device or process existing at the time, capable of accomplishing the same purpose or obtaining the same result and free or open to public use." — lb. 367. " In accounting for profits, as such, for which an infringer is liable, the state of the art when the invention was made is always to be considered. ' ' — lb. 368. "The defendants are not to be held lia- ble for profits in any amount unless there is some satisfactory evidence that profits to that amount were made." Estimates rejected. — lb. 369. " There is no conceivable reason why the damages sustained by a patentee, from the in- fringement of his patent, are not the same whether he proceeds at law or in equity."—/*. 370. " It is doubtless the general rule that in- 234 DAMAGES AND PEOFITS. terest to the final decree is not to be allowed upon profits or damages, because, until the de- cree, they are unliquidated." Where a royalty is adopted as a measure of damages, the rule is otherwise, for in that case the damages are liquidated from the first. — lb. 371. Complainant's patented locomotive lamp was the first one to burn kerosene successfully in that class of lamps. The master computed defendant's profits by ascertaining the saving defendant made by burning kerosene in these lamps over what it would have cost to burn lard oil, the cheapest of other oils. The master com- puted complainant's damages by the profit he would have if he had sold the defendant its lamps. The master found the same profits where only a few claims were infringed as where more claims were infringed, for the rea- son that in the former case enough of the inven- tion was used to enable the lamps to burn kero- sene. Finding sustained. Williams v. Borne, W. & 0. R. B. Co., ISBIatch. 182.— Blatoh- roKD, 1880. 373. In suits at law damages only are recov- erable ; in suits in equity daniages and profits are i-ecoverable.— /ft. 373. The patent " was for an additional par- tial set of reeds placed in the common double reed board of an organ." The profits made on these by defendants were found by the master, who reported that a portion of such profits was due to the wave tuning of said partial set, wave tuning being old. No deduction was made from the profits on account of the wave-tuning factor. BurdettY. Estey et al., 19 Blatch. 1. — Whbel- BK, 1880. 374. The master reported " that horizontal partial sets placed on the upper surface of tlie reed board, instead of being inclined to it, not covered by any patent and not then in use, would have been practically as good as the in- clined sets" of the patent. The court said of defendants : " They are liable to account . . . for what they have gained, . . . without reference to what they might have gained if they had taken something else. "— /4. 375. " As no profits accrued to the defendants on a part of the organs made and disposed of by them containing the orator's improvement, none can be decreed to the orator on account of that infringement. ' ' — lb. 376. Profits made between the date and ante- date of a patent can be recovered. — lb. 377. Infringement, with knowledge of com- plainant's patent, makes the defendants trustees of the profits realized, for complainant's benefit. —lb. 378. Interest may be allowed on profits realized by defendants through infringement committed while defendants had knowledge of complain- ant's patent. — lb. 379. Where interest on defendants' profits is allowable, it does not begin to run till after dis- claimer filed, in that case where a disclaimer is necessary. — lb. 380. In that case where a patent had two claims and the plaintiff had an established li- cense fee of $10 for the use of what was covered by the first claim, and $50 for what was cov- ered by both claims, and the first claim turned out to be void, it was held that no measure of damages as to the second claim was in evidence, and that nominal damages only must be found for plaintiff. Proctor v. Brill et al., 4 Fed. Kep. 415.— Butler, 1880. 381. A salesman on commission can be en- joined and his profits recovered by complainant. A suit against the salesman's employer is no bar to the suit against the salesman. In an account- ing by the employer, the salesman's profits— j.«., commission, cannot be recovered from the em- ployer. Steiger v. Heidelberger, 18 Blatch. 426. — Blatchpord, 1880. 382. A case went to a master after a decree pro confesso. Complainants were unable to show the number of infringing articles made and sold by defendant. Thereupon only nominal dam- ages were recovered. Fisk et al. v. West, Brad- ley & Gary M'fg Co., 19 O. G. 545.— Blatch- FORD, 1880. 383. Where Congress has fixed a maximum amount of damages to be allowed under a pat- ent in a claim against the Government, and the court is of opinion that the claimant is entitled to more than the sum fixed, it will order the sum fixed by Congress. Daldgreen v. United States, 16 Nott & Hopkins, C, C. 30.— Davis, 1880. 384. The Supreme Court gave damages, ' ' with costs and interest, until paid, at the same rate per annum that similar decrees bear in the courts of the State of Illinois." This was held to mean the rate of interest prescribed in the statutes of Illinois. Chicago & Alton Bailroad Co. v. Tur- rill, 101 U. S. 863. -Sup. Ct. 1880. 385. " It is urged that the right to recover gains and profits would not pass without the right to the patent itself. This is probably true at law, but not so in equity. ' ' Campbell v. James et al, 5 Fed. Rep. 806.— Whbblbk, 1880. 386. ' ' The statute authorizes an increase of damages, not' an increase of gains and profits." —lb. 387. When the infringement is not wanton, and the defendants' use is really to the ad van- DAMAGES AND PEOFITS. 335 tage of complainant, damages will not be in- creased. — lb. 388. The master took the profit made by com- plainant on a single one of the infringing arti- cles as the amount of complainant's damage on a single infringing article sold by defendant, and computed this damage on all the infringing arti- cles sold by the defendant ; and the finding was sustained by the court. Am. Saw Co. y. Emer- son, 8 Fed. Rep. 806.— McKektnan, 1880. 389. Prior settlements of damages by agree- ment of parties do not make a precedent for a court to follow. Matthews v. Spangenburg, 14 Fed. Rep. 350.— Wallace, 1882. 390. By the court : " Everything is left to conjecture and speculation, except the fact that there was a recognition of liability to the com- plainant for the unlawful use of his invention. The master fixed the complainant's damages at a nominal sum. In this there was no error." —lb. 391. The master gave complainant " the en- tire profits of the business, on the ground that the defendants failed to separate the profits traceable to the defendants from the general profits." The court held that the complainant must offer proof properly apportioning the profit due to the use of the invention, or only have a nominal award. Kirby v. Armstrong et al, 10 Bissell, 135. — Gresham, 1881. 393. A master found the savings and advan- tages realized by the defendant railroad company, through the use of the complainant's patented brake, to be $30 per annum for each car ; also that for the latter portion of the term of infringement the complainant had an established license of $25 per annum for each car. The court adopted the rate of |25 per year as the rate of damages for the iDliole term of infringement. Emigh v. B. &. 0. B. R. Co., 4 Hughes, 271.— Morris, 1881. 393. The savings effected by the use of the above invention were arrived at by comparing the patented brake with a prior brake. —lb. 394. It is necessary only for the complainant to show to the court before its masters, by testi- mony, facts upon which compensation is to be based, and by which it may be computed, as clearly as circumstances will permit. — lb. 395. When the patent is one which is valuable to the patentee only as others will use it, an established license fee, if there be one, is the safest rule of compensation. — lb. 396. The right to recover the gains, savings, and advantages of an infringement in an equity suit existed prior to the act of 1870, and the specification thereof (as well as the profits and damages) in an interlocutory decree referring the case to a master for an accounting is proper. Coburnetal. v. 8a7i/roeder et al., 19,Blatch. 493. — Whbblbb, 1881. 397. Five dollars being found as the damages recoverable on infringing articles made and sold in the United States, $3.50 was found as dam- ages on infringing articles made here and sold out of the United States, the court remarking that this was not intended as a precedent in other cases against a higher rate of damages for in- fringing articles made here and sold out of the United States. Ketchum Harvester Co. v. John- son Harvester Co., 19 Blatch. 367.— Blatcu- PORD, 1881. 398. By the court : "I consider the law to be well settled that when a complainant's patent covers but one of many features of a machine, the gains on the whole machine cannot be reck- oned as damages, but only the gains arising from the use of the special device or element covered by the complainant's patent. If the other parts of the machine, which go to make the whole a complete and operative mechanism manufac- tured by defendants, are covered by patents in which complainant has no interest, or even if they are public property, the complainant can- not claim profits made by the use of such parts oven in combination with his device. ' ' Calkins V. Bertrand, 10 Bissell, 445. — Blodgett, 1881. 399. The complainant must offer proof, reli- able and tangible, not conjectural or speculative, what defendant's profits and complainant's dam- ages are, or nominal damages only will be awarded, — lb. 400. By the court: "For illustration, if an operative cultivator could be made without the use of any patented device, but by the use of a certain patent a better or improved cultivator can be made, the damages to the patentee for the use of a patent so used would be the in- creased value given the machine by the use of the patent, not the profits on the entire ma- chine." — lb. 401. The United States Circuit Court for the District of Vermont, in Rule 11, provided that " the creation, continuance, and termina- tion of liens and rights created by attachment of property, on the arrest of a defendant sliall be governed by the laws of this State." Held, that it had the right, in an equity cause, to issue a writ of sequestration, in the nature of an at- tachment, to created lien for satisfying a decree, pending the taking of an account of damages and profits in a patent suit. Steam Stone Cutter Co. V. Sears, 20 Blatch. 23.— Wheblbk, 1881. 402. The defendant, a user of the patented 236 DAMAGES AT^D PROFITS. article in his business, infringed by making the article for his own use. Meld, that if he had not thus infringed he would have been obliged to buy of complainant, and that complainant's damages were the profits he would have made if he had sold the articles to defendant ; and that the fact that the patent covered only a part of the articles does not afEect the rule. Putnam V. Lomax, 10 Bissell, 546.— Blodgett, 1881. 403. " The theory of the law is that the com- plainant shall recover the actual damages which he has sustained by reason of the infringement. In arriving at such damages, it is held that where the patentee does not desire to retain a close monopoly of his invention, the amount of the license fee which he has fixed in his dealings with other parties may be considered a proper compensation in damages, where the character of the infringement does not justify exemplary damages. ' ' In this case complainant had in evi- dence one license providing for a royalty of $10 on each patented machine, qualified by various provisions materially affecting its character as a license. Another license to another party pro- vided for a royalty of $3 ; under this license nothing was done, and it afterward was revoked. Under still another license a royalty of $5 was provided subject to reduction to $3 for faithful performance ; this license was still in force. The court fixed the damages at $3 on each ma- chine. Oraliam v. Geneva Lake Crawford M'fg Co., 11 Fed. Rep. 138.— DyEr, 1881. 404. For an example of an allowance of inter- est, on damages awarded, from the date of inter- locutory decree, see — . lb. 405. Defendant having made carpets with in- fringing designs which were exact counterparts of complainant's patented designs, and having made no defence to the action, was found lo be a " wilful infringer," and as such was held to ' ' most rigid accountability, " with no intendment in his favor founded upon inconclusiveness of the evidence ; and the proof was " interpreted most liberally in favor of the complainant." The damages were found by multiplying the number of yards of infringing carpet sold by de- fendant, by the profit per yard that complain- ant had made prior to the infringement. Bige- loiD Carpet Co. v. Dobson, 10 Fed. Rep. 385. — McKennan, 1883. 406. The patent in suit was for pressing and binding short cut hay into bales. The master having reported $4 per ton as defendants' profits, the court annulled the finding, held that defend- ants' profits were " the extra profits due to sell- ing short cut hay pressed and bound into bales, over selling it as loose, short cut hay, or as short cut hay manipulated for market in some prior known way ; " and held that, in the absence of evidence to be offered by complainants establish- ing such profits, only nominal profits could be allowed. The case was referred back to the mas- ter, with liberty to complainants to give further evidence if the master saw fit to allow it. Faulks et al. v. Kamp et al., 10 Fed. Rep. 675. — Blatchford, 1882. 407. For a rSsume of decisions upon damages and profits in patent cases, see — . Soot v. L. S. & M. S. Railroad Co., 105 U. S. 189.— Slt. Ct. 1883. 408. " If, without the improvement, a ma- chine adapted to the same uses can be made which will be valuable in the market, and sal- able, then, as was further said in JfoMrj/ V. Whit- ing, page 651, the inquiry is, ' What was the ad- vantage in cost, in skill required, in convenience of operation or marketability ' gained by the use of the patented improvement?" Ooulds M'fg Co. V. Cowing etal., 105 U. 8. 353.— Sup. Ct. 1883. 409. Where a patented pump for oil wells had but a local and very limited market, the defend- ants' whole profit was allowed complainant, al- though the invention was but a mere improve- ment on the existing devices, the court saying : " This is an exceptional case." — lb. 410. The court objected to the master's ascer- tainment of defendants' profits because, in the making up of defendants' net cost, there was ' ' nothing for the use of tools, machinery, pow- er, and other facilities employed in the manu- facture, and nothing for wastage and expense of marketing.'' — lb. 41 1 . " The mere assignment of a patent woul d give the assignees no right to damages or profits already accrued." Merriami v. Smith et al., 11 Fed. Rep. 588.— Lowell, 1883. 413. " A practice has grown up in the circuit courts of looking upon a patentee's remedies at law and in equity as concurrent, and upon his rights to profits as something which follows necessarily from the establishment of his title. But it has been decided by the Supreme Court at this term that a court of equity is to proceed under the patent law just as it does in any other case of a violated legal right, and to grant relief only when the remedy at law is inadequate." — lb. 418. Complaitiant had a patent for a machine for forming welts which was used in making leather trimmings for carriages. For many years defendants used the improvement in the manu- facture of boots and shoes. Complainant had not had knowledge of the infringement, nor had DAMAGES AND PEOFITS. 237 the defendants had knowledge of the patent. It was held that complainant could not recover profits, but might damages by a suit at law. But an injunction was ordered to issue with an order for an account from the date of the bill of complaint, or from any earlier time when de- fendants had knowledge of complainant's title. —lb. 414. ' ' The right to recover for infringement of a patent, like other choses in action, is assign- able in equity, and the real owner of the right is entitled to maintain a suit upon it, in equity, in his own name." Shaw v. Colwell Lead Co., 20 Blatch. 417.— Wheeler, 1883. 415. By the court : ' ' The infringement by defendants of complainant's patent was neither wilful nor malicious. The case does not .iustify a decree against them beyond the net profits realized by the manufacture and sale of the pat- ented articles. That sum is found to be $38. 06. " Ford -v. Kurtz et al., 11 Bissell, 334. — Harlan, 1883. 416. By the court : " The faucet consisted in connection with a twisting handle, which is a portion of the screw follower in this new combi- nation of old and common elements. There are no other parts or features in the structure apart from the ordinary induction and eduction way. Other faucets had quick-threaded screws, and valves operated by the screw follower, and prob- ably had their own advantages, but this novel arrangement of all the elements of such a faucet had a peculiar utility which gave it its value and character, and created a wide market. When the defendants took this combination, they took that which had given the Jenkins faucet its value and success, and they took the combination which made the faucet." Zane et al. v. Peck Bros. & Co., 13 Fed. Rep. 475.— Shipman, 1883. 417. By the court: "The remaining class of exceptions is, that the master erred in finding that the plaintiffs were damaged by the defend- ants' infringement .by loss of sales to the amount of $1615. 14, that amount being the profits which the plaintiffs would have made had they supplied the same purchasers. I think that the master was justified by the testimony in finding that, but for the infringement, the plaintiffs would have made the sales of their faucets to their old customers which were made to them of the in- fringing faucets by the defendants, and that the plaintiffs' profits would have been $1615.14." —lb. 418. By the court: "The question on this point of the case being as to the loss or damages, in excess of the defendants' profits, which the plaintiffs sustained by reason of the infringement, and the master having properly found that, by reason of the infringement, the plaintiffs lost the specified sales, the damage is fairly estimated by the amount which the plaintiffs would have received for the goods, deducting the cost of manufacture and of sale. In the cost of sale, the store expenses, such as clerk hire, storage, freight, etc., should be estimated upon sales of any large amount. In this case, in view of the fact that the principal part of plaintiffs' faucets are sold by Mr. Adee, of New York, this class of expenses upon sales of about $3800 would add such a trifling amount to the existing expenses of conducting the plaintiffs' business, that it is not desirable to subject the defendants to tlie expense of sending the case back to the master for a reaccounting. The amount, if any, which would be deducted from the $1615.14 would be very small. -The defendants' exceptions are overruled. ' ' — lb. 419. The patented thing was a cartridge which the Government had used. The manufacturer's price was $1.35 a box. The court found that twenty per cent of the manufacturer's selling price is ordinarily considered a fair royalty. This amounted to twenty-five cents a box. The court deducted five cents a box for the presence of another invention in the cartridge, and allowed the patentee twenty cents a box. McKeever v. U. 8., 14 If ott & Hopkins, D. C. 396.— Sdp. Ct. 1878. 420. By the court : " The rate of damages in patent cases may now be said to be generally (1) that the plaintiff may recover, in equity, the profits which the infringer has made from the use of the invention ; or (3) that he may I'ecover at law the profits which he, the plaintiff, has lost by reason of the defendants' infringement ; and that these profits lost, where it can properly be done, will be regarded as simply the fee which would have been charged if the infringer had procured a license. But in cases where the plaintiff has evinced an intention to exercise an exclusive use of his invention, and in cases where the sales of licenses have been too few to estab- lish a criterion of their actual market value, courts have sought for other elements or evi- dences to determine the profits lost. ' ' — Ih. 431. Where complainant has had a decree for the recovery of profits upon infringing ma- chines against one party, such machines go to a third party free from liability to complainant ; and an injunction restraining the use of such machines pendente lite will be dissolved. Steam Stone Cutter Co. v. Sheldons et al., 31 Blatch. 360.— Wheeler, 1883. 433. " An infringer is liable to account for the 238 DAMAGES AND PROFITS. profits of tlie infringement to the owner of the patent, because they are the avails of the prop- erty of the owner in the hands of the infringer, which he has no right to detain from the owner, ' ' Lewis V. Standard Steam Laundry MaaMne Co. et al., 21 Blatch. 184.— Whbblbb, 1883. 433. In this case the amount of a former roy- alty was found as damages upon a basis that the I profits were retained by the defendants, and that the royalty furnished no measure of damages be- yond profits. — lb. 424. By the court : " The damages recovered by the orator are not for a sale for use, which would probably free the whole use." Matthews V. Spange-nberg, 15 Fed. Rep. 813.— Whbbleb, 1883. 425. Where the defendants show that other parties haA infringing articles in the market dur- ing the period covered by the accounting, but do not show that such other infringing articles had an effect in reducing complainants' prices, the presence of such other articles in the market is an immaterial fact. Mtch et al. v. Bragg et al., 31 Blatch. 302.— Shipman, 1883. 426. The article in dispute being a snap hook, and the improvement in question being an im- provement in the tongue, the court held that it was not incumbent on complainants to appor- tion the damages as between the tongue and other parts. — lb. 427. By the court : " I do not suppose that the principle that the plaintiff must affirmatively show by satisfactory evidence how much of the damage was attributable to the infringement means that, after he has proved that the in- fringement was the sufficient operative cause of the entire damage, and has refuted all the sug- gestions of contributory causes which the de- fendant made, he must disprove the existence of all the possible causes which might have ex- isted, but which it was not suggested ever did exist." — lb. 428. " The defendants are liable only for the pecuniary advantages which accrued to them by the use of complainant's system, beyond that which would have resulted from the use of the other systems which they had the right to em- ploy in attaining the same end." Munson v. City of New York, 31 Blatch. 342.— Wallace, 1883. 439. The patented invention being an im- provement in preserving, filing, and verifying bonds, coupons, certificates, and the like, an estimate by the treasurer of a railroad corpora- tion, who had used the patented system, as to the savings attained thereby, was rejected as in- competent evidence. — lb. 430. A decree for nominal damages recovered by a patentee against the manufacturer of in- fringing machines, does not operate to license those machines as far as users of such machines are concerned. " The infringement by the manufacturer and the infringement by the user of an infringing machine are separate trespasses, and judgment because of one is no bar to an action for the other. To create a bar there must be satisfaction, and nominal damages is not satis- faction." This rule is not altered because the nominal damage against such a manufacturer was found under a stipulation entered into by the parties. Blahe v. Qreenwood Cemetery, 21 Blatch. 233.— Benedict, 1883. 431. Where a patentee received $600 on all the machines manufactured under his patent, that sum was taken as the damages to be found against an infringer. — lb. 432. Where complainant showed the value of the advantage of his stone-crushing machine over crushing stones by hand, but the evidence showed the existence of another stone-crushing machine open to defendant to use, with no evi- dence as to the value of complainant's machine over such other machine, it was held that the evidence did not warrant the finding of more than nominal profits. — lb. 433. Where a license fee is appurtenant to a patent having a number of claims, and defend- ants infringe only one claim, such license can- not be taken as a measure of damages, yfoos- ter V. SimoTvson et al., 16 Fed. Rep. 680. — Wallace, 1883. 434. " Where damages are sought by the pat- entee against an infringer, his inquiry, as in all other cases where a plaintiff's right of property has been invaded, is, what is the value of the right and the extent of the injury ? If the in- jury amounts to a deprivation or appropriation of the entire right of property in a patent, the value of the patent is the measure of damages." lb. 435. A license fee is ordinarily the measure of damages. — lb. 436. ' ' Although the patent secures to the pat- entee the whole invention as described and claimed, the several claims may secure him against quite different and distinct appropria- tions of his property. Where less than the whole invention has been infringed, evidence must be given to show the nature of the part appropriated. ' ' — lb. 437. " Where a patentee recovers from an in- fringing manufacturer full damages and profits, on account of the infringement, the purchaser from such a manufacturer, who is a user of the machine, will be protected in such use against DAMAGES AND PEOFITS. 239 a suit lor infringement, as he would be if he were a licensee from the patentee. ... To effect such a result it must further appear that the patentee's claim to profits and damages against the manufacturer has been actually paid and satisfied." Allis v. Stowell, 16 Fed. Rep. 783. —Dyer, 1883. 438. " The patentee of an improvement i.s limited in his recovery to such profits as may be properly apportioned to the use of his improve- ment. He can only recover profits upon the en- tire article where such article is wholly his own invention, or where its entire value is properly and legally attributable to the patented feature." (Citing many cases.) Maier v. Brown, 17 Fed. Kep. 736.— Bbown, 1883. 439. " If one discovers a new composition of matter, such as gun-cotton, nitro-glycerine, or vulcanized rubber, or invents some new ma- chine, such as the telephone, or some new article of manufacture, such as barbed wire, or a new pavement, he would obviously be entitled to damages arising from the manufacture and sale of the entire article. Upon the other hand, if his invention were limited to some particular part of a large machine, such as the cut-off of an engine, the axle of a wagon, or the seat upon a mowing machine, it is equally clear that his recovery must be limited to such profits as arise from the manufacture and sale of the patented feature. ' ' — lb. 440. " Damages, too, must be proved and not left to conjecture, and the fact that it is im- possible to separate the profits arising from the improvement from those incidental to the manu- facture of the whole machine, is an insufficient reason for awarding the plaintiff more than he is justly entitled to. (Cases cited.) In case he is unable to prove how much of the entire profits upon his machine is due to his patent, he can recover only nominal damages." — 111. 441. The patented thing being a rustic trunk covered with slats upon the outside, the master gave the complainant the entire profits arising from the manufacture and sale of the trunk. The court sustained exceptions to this action of the master, and said : " A proper method of estimating damages in such cases would be to take the profits made by the defendant upon one of these trunks, and deduct from them the profits upon an ordinary trunk of similar size and general description. The difference might be properly attributed to the plaintiff's inven- tion. ... If the profits on plaintiff's trunks were no larger than upon ordinary trunks, it would Indicate that he had suffered no damage legally capable of estimation. "—/J. 442. While it is true that defendant may have sold infringing articles which complainant would have sold if defendant had not infringed, damages thereby occasioned cannot be inferred without proof. " Defendant's sales may have been the result of superior energy, diligence, and business capacity, or the accident of trade," and the burden is upon complainant to show that defendant's sales were attributable to the increased value given the thing by the patent. ~Ib. 443. " An infringer is liable to account for the profits of the infringement to the owner of the patent, because they are the avails of the property of the owner in the hands of the in- fringer which he has no right to detain from the owner." Smiths. Stwnda/rd Laundry Machine Co., 35 O. G. 893. -Wheeler, 1883. 444. " Mere delay in seeking relief when there is no estoppel will not in general prevent an in- junction, though it may preclude the plaintiff from right to an account for past profits. " N.Y. Qrape Sugar Co. v. Buffalo Grape Sugar Co. et al., 21 Blatoh. 519.— Shipman, 1883. 445. Where a bill of complaint does not show in the complainant a right to profits and dam ages accruing before the complainant took its assignment of the patent, the decree cannot cover profits and damages accruing before such assignment. — lb. 446. In a case where the complainants own but a part of a patent in suit, the recovery of damages and profits must be limited to such part. Adams et al. v. Howard et al., 22 Blatch. 47.— Wallace, 1884. 447. Although a patent expires pending a lit- igation upon it, an equity suit previously com- menced will be retained to complete the account- ing.— /&. 448. The plaintiff began an action at law for infringement of his patent. After beginning this action the plaintiff brought his bill in equity for the same infringement, and the case was car- ried to a final decree, covering all defendant's profits but no damages, because plaintiff elected to put in no evidence thereupon. He then sought to recover damages in his action at law, and the court said : " The plaintiEE having elect- ed to take judgment for. his profits for the pre- cise infringement which is the subject of this action, which judgment has not been reversed, he cannot now prosecute his action for other damages arising out of the same acts of infringe- ment." Child V. B. & F. E. Iron Works, 19 Fed. Rep. 258.— Lowell, 1884. 449. Machines made in infringement of a pat- ent can be enjoined after the expiration of the 240 DAMAGES AND PEOFITS. patent and a right to an accounting follows. Bewy et al. Ex'tr'x v. Raynor et al., 32 Blatch. 13.— Wheeler, 1884. ' 450. " As a general rule, a patentee is not en- titled to interest on profits made by an infringer. The reason is that profits are regarded in the light of unliquidated damages. But in many of the cases it is said that circumstances may arise in which it would be proper to add inter- est." III. Centrals. M. Go. v. Turrill Ad'tr'x, 4,Sup. Ct. Rep. 5.— Sup. Ct. 1884. 4.51. It seems that interest begins to run from the date of a final decree. Subsequent proceed- ings, changing the amount of the recovery, do not alter this rule so far as the amount finally re- covered is concerned. — lb. 453. The price for a perpetual license for a driven well for factory purposes being $135, and defendant having used the well but a short time, the court remarked that a recovery of $125 would be excessive unless it could be shown that the de- fendant's profits equalled that sum. Chreen v. Barney, 19 Fed. Rep. 430.— Lowell, 1884. 453. " The burden of proof is upon the plain- tiff to show the amount of damages that he has suffered, and to furnish the jury reasonably sat- isfactory evidence to enable them to reach a con- clusion on that subject." Ifat'l Oar B. 8. .Co. V. Terre Haute Oar & M'fg Co. et al., 19 Fed. Rep. 514.— Woods, 1884. 454. " It is competent for a patentee in order to enable the jury to measure the damages, to prove contract prices at which licenses had been granted under the patent while it was in force ; but ... it is not competent for him to prove the prices paid for infringements ; that is to say, payments made in settlement of infringements already perpetrated. "—lb. 455. Where an action is at law and for dam- ages, the defendants are liable for the value of the invention at the time they appropriated it ; in estimating damages, the patented thing may be compared with unpatented things designed to serve the same end as far as may be, and also with patented things ; but in the latter case the value of other patents is to be considered. — lb. 456. Where complainant shows that defend- ants have made one infringing device, and also shows that defendants have had made a number of devices for the same purpose, it cannot be as- sumed that all the devices are infringements, nor the burden of proof be put on defendants to separate the infringing from the non-infringing devices, and complainant is not relieved from the operation of this rule because defendants' books, when produced, do not make the desired dis- tinction, unless the evidence goes so far as to show that defendants have consciously done wrong in the premises. — lb. 457. " Where a patent is for an improvement, and not for an entirely new machiile or con- trivance, the patentee must show in what partic ulars his improvement has added to the useful- ness of the machine or contrivance. He must separate its results distinctly from those of other parts, so th&t the benefits derived from it may be distinctly seen and appreciated." Oarretson V. Clark et al.. Ill U. S. 130.— Sot. Ct. 1884. 458. Complainant's patent being for an im- provement in mop-heads, new simply in the mode of clamping, complainant proved the cost of his mop-heads and the price at which they were sold, and claimed the right to recover the difference as damages. The claim was rejected. —lb. 459. In an accounting "proo:f of license fees charged and paid, before use, for the right to use an invention, is admissible upon the same theory that proof of sales in open market of any marketable commodity is competent, because it shows or tends to show a market price. But settlements for past use of an invention cannot be brought within the rule because inconsistent with the principles upon which the rule rests. The infringer, or one who is accused of infringe- ment, is from the necessity of the situation, under compulsion to make compensation as de- manded, or to take the risk of a suit ; and how much his action in a particular case of settlement may have been influenced by this or other special considerations it is impossible for the master or the court to determine, and therefore the inquiry should not be entered upon. The only way to escape the inquiry is to exclude the evidence." Weatcott et al. v. Rude et al., 19 Fed. Rep. 830.— Woods, 1884. 460. "In respect to two or more claims in a patent, each of value and distinct from the other, one cannot equal both or all in value, any more than in mathematics a part can equal the whole. The licensee may, if he choose, bind himself to pay the same price whether he use the entire in- vention or a part only ; but at the same time he acquires the right to use all, and so his agree- ment may not be unreasonable, but if, as against an infringer, such a license can have any force reasonably, it must be in the way only of estab- lishing a royalty for the entire invention." — lb. 461. Defendants were found to infringe one claim among the six in complainant's patent, and the master reported as damages the license fee complainant was accustomed to charge for a license under this patent generally. The case was again referred to the master, with liberty DAMAGES AND PEOFITS. 241 to the complainant to reopen his proofs, and he thereupon proved, by parol, that his said license fee was for precisely such a use as defendants had employed. On the coming in of the report, de- fendants objected to this finding as making a new case. The court held that the procedure was proper and overruled the exceptions. Wooster V. Simonsonet al., 30 Fed. Rep. 316. — Wheel- er, 1884. 463. The patented thing was a mirror. Prior to infringement by defendants, complainants had the sole sale thereof. The master awarded dam- ages on the theory that complainants lost the sale of all the mirrors sold by defendants. The judge refused to confirm this finding, and said : " The question is not what, speculatively, the com- plainants may have lost, but what they actually did lose. If the defendants had not sold the pat- ented mirrors to their customers, it does not fol- low that the complainants would have sold them to the same customers or to retail merchants. ... If it had been shown that the ordinary sales of the complainants for the same market fell off during the period of defendants' sales, in an amount equal to, or even approximating reason- ably to the amount of defendants' sales, the mas- ter's finding could be approved. . . . For aught that appears, the defendants created a market by their own enterprise, and by selling the mirrors at a reduced price, that otherwise would not have existed. " The court suggested, as a proper measure of damages, the profits that complain- ants would have made if defendants had con- tinued to buy of complainants during the in- fringing period, at the rate of prices they had previously bought. Hall et al. v. Btea/rn et al. , 30 Fed. Rep. 788.— Wallace, 1884. 463. Where damages and profits for infringe- ment of a patent are under consideration, and it is claimed that expenses appurtenant to the main- tenance of the defendant during a past period of his lunacy should be deducted from the dam- ages and profits, it is not within the province of the court to make such allowance. Avery et al. v. Wilson, SO Fed. Rep. 856.— Dick, 1884. 464. The complainants' patent being for im- provement for burning tan-bark and the like in a wet state, the master in his first report gave complainants as profits the cost or value of the wood, which but for the use of the patented in- vention defendants would have burned. The court set this finding aside, and the master in his second finding gave nominal damages only, which report was confirmed and an appeal taken to the Supreme Court. The Supreme Court ap- proved the latter finding, and said : " The differ- ence between the cost of generating the heat by the use of the improvements and wet tan, and the cost of producing it by wood as a fuel, could not be the measure of profit, unless with these improvements, or with other methods, wood was the only means besides wet tan of producing the same heat, and that was not shown. Other sub- stances may have answered equally as well as fuel." Black et al. v Tlwrne et al., Ill U. S. 133.— Sup. Ct. 1884. 465. " It does not always follow that because a party may have made an improvement in a machine and obtained a patent for it, another using the improvement and infringing on the patentee's rights will be mulcted in more than nominal damages for the infringement. If other methods in common use produce the same re- sults with equal facility and cost, the use of the patented invention cannot add to the gains of the infringer or impair the just rewards of the inventor.'' — lb. 466. Where a license fee has been generally paid, its amount may be generally taken as a criterion of damages. — lb. 467. Complainant's patented machine was a device for repairing railroad rails. Defendant sought to reduce complainant's profits by show- ing that defendant might have used, with equal- ly good results, another device originated subse- quently to complainant's patent. The'court held that such a comparison could not be made, and that in making such comparison it must be of the complainant's patented device, " with what was known and open to the public at or before the date of the . . . patent." Turrell v. 111. Central R. R Co., 30 Fed. Rep. 913.— Harlan, 1880. 468. In the case last quoted the court said : ' ' Indeed, upon the principle or theory asserted by defendant's counsel, the junior patentee may himself use the invention of a prior patentee without liability to the latter for profits, provided he shows that had he used his own invention he would have accomplished the same, or better, at the same or less cost. I do not believe such to be the law, although in the several oases cited by counsel there are general expressions which seem to sustain that view. But, after close study of those cases, I am of opinion that in no one of them was the precise point now under consider- ation in the mind of the court, or necessarily in- volved in the decision." — lb. 469. A part of the question before a master was, what portion of defendant's profits arose from the use of pertain non- infringing machines ? The master found this sum to be represented by a certain fraction of the whole. Defendant contended that this sum would be properly rep- 242 DAMAGES AND PKOFITS. resented by a larger fraction of the whole. The court, on the evidence, was unable to agree ex- actly with the master or with the defendant's contention, and reached a result by adopting a mean or middle point between the two. — Ih. 470. Where a patentee does not stamp the pat- ented articles he sells with the date of his patent, as required by law, but gives an infringer notice, the patentee cannot recover damages or profits arising prior to the time of the notice. Allen v. Deacon, 21 Fed. Eep. 133.— Sawtee, 1884. 471. An action at law or a bill in equity can be maintained during the life of a patent for the use 6f patented machines apart from the sale, if there has been no recovery for the sale and use. Steam Stone Cutter Oo. v. SheldoTis et al., 23 Blatch. 484.— Wheblbr, 1884. 472. A complainant cannot, in any mode, re- cover both the profits of a sale for use and the profits of the use. Each is a trespass on the complainant's exclusive rights, but not a sepa- rate and distinct trespass. A recovery for one in- cludes a recovery for a part, at least, of the other, so that a recovery can be had for either but not for both. When a complainant has a recovery for one he cannot have a recovery for the other. — /*. 473. Recovery of the profits of a sale for use, vests the title to the use in the purchaser of the patented machine. — lb. 474. " Where an owner of a patent has com- pensation for the sale of a specific machine em- bodying the invention, that machine is- forever freed from the monopoly. " — lb. 475. "Evidence of settlements for infringe- ments is not competent to show a license fee or royalty ; and upon the same principle a license (for the future) given wholly or partially in con- sideration of a settlement for infringements, is not admissible in evidence against a stranger." Qottfried v. Orescent Brewing Co. , 33 Fed. Rep. 433.— Woods, 1884. 476. It seems that where there is a direct con- flict between the evidence of complainant and respondent as to the value of an invention, the master's finding may be based upon his opin- ion. — lb. 477. It was shown that the patented machines had been sold at prices varying from $100 to $40, and that in a contract between the paten- .tees whereby one of them was to manufacture • and sell the machines, it was stipulated that the other should be entitled to a royalty of $10 only upon each machine. , It was held that while these facts constituted competent evidence against complainant in respect to the value of sthe Laventio4, .complainant was not concluded thereby, because the sales were not made in such numbers and at such uniform prices, as to con- stitute an established license fee. — lb. 478. Where the patented thing was a design for a newel post, it was shown before the mas- ter that the cost of making the posts was $5 each, and that ten per cent was a fair manufac- turer's profit. The balance the master and court gave as defendant's profits. Simpson et al. v. Dams, 22 Blatch. 118.— Benedict, 1884. 479. The master and the court arrived at de- fendant's profits by adding the manufacturer's profit to the cost and deducting the amount from the selling price. Defendants showed that they realized the same profit from another unpatented article of the same general kind, but the court held that this e/idence did-not affect the finding as to the defendants' profits on the patented arti- cle.— JS. 480. " When it appears, in a case in equity,, that the defendants' profits, derived from the use of plaintiff's Invention, do not amount to so much as the plaintiff's damages arising from the infringement, the court may add to the amount of the defendants' profits a sum sufficient to make the amount awarded by the decree equal to the plaintiff's damages." — lb. 481. "If one person is in any case exempt from being sued for damages for using the sama machine, for the making and selling of which damages have been recovered against and paid by another person, it can only be when actual damages have been paid, apd upon the theory that the plaintiff has been deprived of the same property by the acts of two wrong-doers and has received full compensation from one of them." Birdsell et al. v. Shaliol et al., 113 U. S. 485.— S0P. Ct. 1884. 483. " The question for the master to settle is the advantage which the defendant derived from the use of the part of the patented invention which was infringed, over what he had in using other machines then open to the public, and this accounting must be confined to an account of the profits received by the defendant as a direct result of the use of that part of the invention which was infringed and which is specified in the other." Fischer v. Hayes, 33 Fed. Rep. 539. — Shipman, 1884. 483. " It will not be proper for the master to infer because a certain amount of advantage can be derived from the use of the patented machine, the amount of profit was enjoyed by the defend- ant from the infringement of the feature of the machine specified in the . . claim," there being other claims in the patent. — lb. 484. Although defendant has been adjudged DAMAGES AND PROFITS.. 243 to be an infringer of only one claim among sev- eral, it is yet competent for the complainant to show the advantage over other machines derived by the use of the patented machine as an entirety, if in addition thereto he offers other evidence which tends to properly apportion that part of the profit which belongs to the mechanism cov- ered by the claim which defendant is adjudged to infringe. — lb. 485. A master reported as damages what he found the defendants would have been willing to pay as a license fee on the whole machine. The machine embodied other patented devices. To warrant the finding it should have been proved that the particular patent embraced all the mech- anism of value in the machine. Where the pat- ent covers only a part of the mechanism, either it should appear what portion of the license fee was paid for its use, or what portion was paid for the use of other inventions embodied in the machine. " The fact that there was no evidence introduced as to the value of any of the other inventions, would not, of itself, warrant the con- clusion that the license fee was paid solely for the use of the patent in suit. Damages must be actual and must be proved. ' ' Porter Weedle Co. V. Nat'l Needle Co. etal., 23 Fed. Kep. 839.— Colt, 1885. 486. "In equity as is the settled doctrine, an infringer is treated as a trustee of the patentee of the gains derived by him from the infringe- ment." Gordon et al. v. 8t. Paul Harvester Works et al., 23 Fed. Rep. 147.— Nelson, 1885. 487. The patented thing being a folder, the master allowed the complainants all the profits made by defendant by the use of the patented machine, in folding cloths and strips, as com- pared with doing the same thing by hand. De- fendant took exception to this. There was evi- dence in the case tending to sustain this finding and no evidence adduced to contradict it. The finding was sustained. Tlumvpmn et al. v. Wooster, 114 TJ. S. 104. -Sup. Ct. 1885. 488. The patented thing was a folder, and the master, in allowing profits, took no account of the fact that folded strips, such as those used by defendant, were an article of merchandise, cut and folded by different parties at a charge of only twenty-five cents for one hundred and forty- four yards, or about one sixteenth of a cent per yard, whereas the defendant was charged with a profit of one half of a cent per yard. Defendant took exception to this finding. The evidence before the master did not show by what process such folded strips were made, and as the proofs stood they must have been made by the use of the complainants' machine, for there was no other machine upon which they could have been made. The master's ruling sustained. — Ih. 489. In a suit upon a design patent, the find- ings of the Circuit Court allowed as damages ' ' the entire profit to the plaintiffs per yard in the manufacture and sale of carpets of the pat- ented designs, and not merely the value which the designs contributed to the carpets. There was no evidence as to that value." The Su- preme Court said : " Approval of the particular design or pattern may very well be one motive for purchasing the article containing it, but the article must have intrinsic merits of quality and structure to obtain a purchaser, aside from the pattern or design, and to attribute in law the entire profit to the pattern, to the' exclusion of the other merits, unless it is shown by evidence as a fact that the profit ought to be so attributed, not only violates the statutory rules of ' actual damages ' and of ' profits to be accounted for, ' but confounds all distinctions between cause and effect." Dobson et al. v. Hartford Carpet Co., 114 U. S. 439. -Sup. Ct. 1885. 490. In this case, where the infringement was deliberate, where four infringing machines had been used eighteen months, and two others three years, and where the complainant was accus- tomed to make his patent profitable through li- censes, it was held that notwithstanding the short terms of infringement, the proper measure of damages was the customary license fee. Stutz V. Armstrong et al., 25 Fed. Rep. 147. — AonE- soN, 1885. 491. " While the patentee may, if he choose, confine himself to a recovery for past infringe- ment, and insist that the further use of the in- fringing machine be enjoined, yet, if he elect as his measure of damages the full license fee established by himself, the payment thereof operates to vest in the defendants the right to use the machine during the term of the patent, or until that particular machine is worn out." — lb. 492. Complainants' patent was for minor com- binations in a tuck-marker. Tuck-markers, gen- erally, were old. Complainants failed to prove the proportion of profits justly ascribable to their improvement. The court gave nominal dam- i ages only. Bostock et al. v. Ooodrieh, 25 Fed. Rep. 819.— BuTLEK, 1885. ' 493. Prices paid by infringers in settlement of suits do not tend to establish a fixed royalty, and therefore a rule of damages. Cornely v. Marckwald, 23 Blatch. 163.— Wallace, 1885. 494. For an example of a refusal to allow, as damages, complainant's alleged forced reduction of prices, see — . lb. 495. It seems that where the Government uses 244 DAMAGES AND PEOFITS. a patented invention without a specific contract, an implied contract arises that the Government shall pay for such use. Huhbell v. United States, 30 Nott & Hop. 354.— Davis, 1885. 496. It seems that where the Government with- out authority uses a patented article a license will be implied and also a contract to pay for its use. Palmer v. United States, 30 Nott & Hop. 432.— NoTT, 1885. 497. In a siiit upon a reissued patent defend- ant offered no evidence and did not appear at the hearing. At the accounting in damages de- fendant offered the original patent in evidence, ' ' for the purpose of showing that there was no infringement of the reissue upon any construc- tion of it that would be valid on comparison with the original. The master rejected this evi- dence and took an account of the damages due to the extent of what was shown by the orator's evidence in chief." The master's finding was sustained. Wooster v. Thornton, 34 O. G. 560. — Whbblbr, 1886. 498. " An established royalty or license fee is evidence, and not an absolute test of value. ' ' — lb. 499. A reduction in the price of complainant's patented goods through defendant's infringing competition, " is a pecuniary injury caused by the infringement, and is the subject of an award of damages, although the defendant may have made no profits and the plaintiff may have had no established license fee.'' Tale Lock M'fg Co. V. Sargent, 117 U. S. 537.— Sup. Ct. 1886. 500. In the case last cited the patent was for permutation locks. Complainant granted no li- censes, but supplied the demand for the lock and was able to supply the demand. The market for the lock was limited to safe-makers. None but a safe-maker wanted, or would buy, such a lock. The turning-bolt was the essential feature of the patented lock. Defendant adopted that turn- ing-bolt, reduced the price of the look, and forced the patentee to do the same. Defendant was the patentee's only competitor. The court gave, as damages, complaiiiant's loss through enforced reduction of prices. —lb. 501. " The plaintiff must show what profit or damages were attributable to the use of the in- fringing design. " Bdbson et al. v. Doman et al., 118 U. S. 10.— Sup. Ct. 1886. 502. "Where a patented thing is a machine, which defendant has used but not made, and complainant has an established royalty, com- plainant, on bringing suit in equity, is entitled to an injunction without damages, or, if he pre- fers, an account of profits and an injunction against further use. Bragg v. City of Stockton, 37 Fed. Rep. 509.— Sawyek, 1886. 503. Where, of three patents in suit, one is void, the second immaterial, and only two im- portant claims of the third are valid, nominal damages are proper. Moffltt v. Camanaugh, 27 Fed. Rep. 511.— Shipman, 1886. 504. Where a license fee is based on the use of a double process of which defendant has used only one part, and the value of that part is not established by evidence, nominal damages are proper. — lb. 505. Where an infringer makes sales of the patented goods, which the patent owner would otherwise have made, the damage to the patent owner is the loss he sustains through the loss of such sales. Hobbie et al. v. Smith et al., 27 Fed. Rep. 656.— Coxe, 1886. • 506. If a patent owner is compelled to reduce his price by reason of an infringer's unlawful sales, such reduction of price forms a part of the patent owner's damages. — lb. 507. A fixed license constitutes a proper meas- ure of damages. (Said in a case at law.) May V. County of Pond du Lac, 27 Fed. Rep. 691.— Dtbh, 1886. 508. For an example of an allowance of inter- est upon damages, see — . lb. 509. " Before the act of July 8th, 1870, paten- tees were not authorized in a single suit to re- cover both profits and damages. They had their election, either to treat the infringer as their trustee, and to file a bill in equity to recover the profits which the infringer had made by the un- lawful use of the patented invention, or to sue at law for the damages which they had sustained, without reference to the question whether the wrong-doer had gained or lost by its use ; the measure of damages being not what the defend- ant had gained, but what the plaintiff had lost. But under Section 55 of that act (Section 4921 of Rev. Stat.), courts of equity, on a decree for an infringement, may award to the complainant, ' in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby.' " Willimantic Thread Co. et al. V. Clark Thread Co., 27 Fed. Rep. 865.— Nixon, 1886. 510. Where a patentee has an established li- cense fee for the use of his patent, which patent has- different claims, and a defendant infringes only a part of the claims, it is the duty of the master to ascertain the relative value of the different claims as nearlj' as the nature and cir- cumstances of the case allow, and to charge the defendant only as to the claims infringed. — lb. 511. The burden of proof is upon thd com- plainants to prove the value of different claims under their patent. (This rule applied.) — lb. DAMAGES AND PEOPITS. 245 513. Where there has been inexcusable laches on the paitof the coraplalnants, and entire good faith on the part of the defendants, complainants' claim to profits is destitute of equity. (In this case a license fee of $1000 was taken as a meas- ure of damages.) Keller et al. v. Stdkenhach et al., 38 Fed. Rep. 81.— Aoheson, 1886. 513. Where a patented improvement is for a portion of a device, as for a curved harrow- tooth, profits upon the whole device are not to be given to complainants. Ihittle et al. v. Oay- lord, 38 Fed. Rep. 97.— Coxe, 1886. 514. ' ' Royalty paid for licenses for the right to use the invention is not evidence of damages sustained by the patentee, by the sale of the pat- ented article, suificient to authorize a recovery. The value of some patents consists principally in the right to use the invention ; the value of others, in the right to sell ; an infringement by selling, and infringement by use of the patented article are essentially different invasions of the patentee's property." Colgate y. Western Elec- tric M'fg Co., 38 Fed. Rep. 146.— Wallace, 1886. 515. ' ' Royalty paid for the whole monopoly of selling and manufacturing under a patent, is not sufficient evidence of the value of the right to make occasional sales in a particular terri- tory." " An exclusive licensee may well afEord to pay a much larger consideration for the prop- erty right than the patentee could command from purchasers of license to compete with other sell- ers. ' ' — lb. 516. " The burden of proof is on the plaintiff to prove ... an established fee or royalty. . . . To be binding on a stranger or infringer, sales of licenses must be sufficient in number to estab- lish the fee or royalty charged for the use of the patent at its market value. . . These license fees must be sufficient in number to establish the fee or roya,lty charged, and must also be uni- form, and be actually paid or secured before the defendants' infringement was committed. The license fee or royalty must relate exclusively to the patent claimed to be infringed. . . . License fees for the use of that and another patent blend- ed together would establish a royalty as to either patent. The royalty must be for the use of the identical patent in controversy, and for that alone, in order to fix the market value and ren- der it the established license fee." Adams y. Bellaire Btamvping Co. et al., 36 O. G. 567.— Jackson, 1886. 517. The patent in suit was for an improvement in pumps, and the improvement consisted in the chamber and valves so arranged in a diaphragm pump that they could be reached and the valves removed by hand. The master, in awarding profits and damages, found that no prior pump contained any part of the patented improvements as defined by the court. The court sustained the master, saying that tlie fact that in prior pis- ton pumps the chamber and valves could be reached and removed by hand was immaterial. Loud V. Btone, 38 Fed. Rep. 749.— Colt, 1886. 518. In computing damages and profits the prior art is sometimes pertinent, and so is the question whether or not the prior thing was an abandoned experiment. — lb. 519. " It is a general rule in patent cases that established license fees are the best measure of damages that can be used. There may be dam- ages beyond this, such as the expense and trouble the plaintiff has been put to by the defendant, and special inconvenience he has suffered from the wrongful acts of the defend- ant ; but these are more properly the subject of allowance by the court under the authority given to it to increase the damages." Clarhetal. v. Wooster, 119 U. S. 333.— Sop. Ct. 1886. 530. It is the duty of the plaintiffs to point out the damages to a jury, and satisfy the jury what they are, and to discriminate the damages done to the plaintiffs by defendant's use of the patent- ed mechanism from the damages done to the plaintiffs, if any have been done to them, by the use of any other devices which the plaintiffs may have patented, or which the defendant may have used. Bayer et al. v. Coupe, 39 Fed. Rep. 858. — Cakpentbh, 1886. 531. The patent in suit was for spring tooth- harrows. The master's report gave the com- plainants defendants' entire profit on the entire harrow. Judge Witliey had overruled defend- ants' exceptions and confirmed the report. A later report came before the present court and was excepted to. The patent in suit had more than one claim, and that covering only a part of the whole device was in issue under the ac- counting. It was held that the award of profits must be confined to the specific improvement in issue. Beed et al. v. Lawrence ei a?., 39 Fed. Rep. 915.— Sevbkns, 1886. 533. " Of course it can make no difference in the rule (as to apportionment of profits) whether the unpatented features were in use before or only since the patent was obtained. In either CEise, the public is entitled to use them, and the patentee, therefore, has no right to recover dam- ages which include such use." — lb. 533. " The rule (as to apportionment between patented and unpatented parts) would be the same if the inquest were one of damages to com- plainants, as, indeed, it should be ; for the un- 246 DAMAGES AND PEOPITS. derlying principle is the same, and is not afifected by the mode of redress elected. That this is very clearly indicated in the opinion of the Supreme Court in Bobson v. Hartford Carpet Co.'' — lb. 524. In an action at law it is a proper mode of computing damages to show the value of the in- vention to any person using it, " and the law deems it a fair inference that, whatever value has been received by the defendant through the use of this invention, so much has been taken away from the plaintiff, and he is entitled to have it restored to him." — lb. 535. Where A is a dealer in infringing goods, and sells infringing goods for B, recovery may be had against both, but one satisfaction is satis- faction for both. Jennings et al. v. Dolan, 38 O. G. 1018.— Wheblek, 1887. 526. It seems that a patent owner who does not grant licenses or operate personally under his patent is not entitled to damages as such. Eoerest v. Buffalo Lubricating Oil Co. , 31 Ted. Rep. 742.— CoxB, 1887. 527. In proving defendant's profits, complain- ant must first show that defendant derives some profit from the practice of the invention, and - then what portion of the profit was due to the practice of the invention. — lb. 528. Where an infringement of a patent has been committed by A and B under a contract which A and B entered into jointly, and A has permitted B to reap all the benefits of the in- fringement, A is yet liable for the damages. Am. Bell Tel. Co. v. Albright, 32 Fed. Rep. 287. — Bradlet, 1887. 529. Two parties, A and B, were joint in- fringers of a patent. They were sued separately, and an award of damages and costs was made against B. It was sought to recover the real damages against A, but it was contended that the nominal damages had been paid by B. This was not proved and A was held to pay the dam- ages. — lb. 530. By the court : " The plaintiff is entitled to recover damages (if he establish the infringe- ment by the defendant) arising from the use of the valid claims of his patent, and the measure of such recovery would be the profits or advan- tages derived by the defendant in the use of said claims in the plaintiff's patent, for the period in which he so used, and any specific damages which he may show he has sustained by such use, or by reason of such use ; and In the ab- sence of proof of such profits and gains or spe- cific damages so sustained, the plaintiff would only be entitled to nominal damages." Byerly V. Cleveland' Linseed Oil Works, 31 Fed. Rep. 73.— Wblkek, 1887. 531. The patent in suit was for a single fea- ture of a lock for travelling-bags. The com- plainant had granted no license, but himself made and sold the locks ; he showed that his profit was ninety-one cents per dozen, and that defendants had made and sold, with bags, 88,- 265 of them. He made no further showing of profits. The court said : " Two defects are ap- parent in the plaintiff's claim in this respect — one is, that the case does not show that plaintiff's profits are due to the patented feature of the locks, in whole or in any definite part ; the other is that these facts do not show that the plaintiff would have had an opportunity to make and sell these locks if the defendants had not made and sold them with their bags. The case shows that there are other kinds of locks for such bags, and that they are mere incidents to the bags for their more convenient use. ' ' Boemer v. Simon et al. , 31 Fed. Rep. 41.— Wheeler, 1887. 532. Where, on a hearing in profits and dam- ^ ages, it appears that, prior to the patent in suit, there were other devices in use for the same pur- pose it becomes obligatory upon the complain- ants to adduce clear and positive proof appropri- ating the profits, or equally convincing proof that they should not be apportioned, for the rea- son that the entire market value of the machine is due to the invention. Fay et al. v. Allen, 30 Fed. Rep. 446.— Coxe, 1887. 533. "The Cowing case was an exceptional one. The patent covered a pump designed for a special purpose in a particular locality. There was no other pump which performed the same functions. The market value of the machine was due solely to the invention. To remove the patented features was like taking out the heart and lungs of a human being. The ma- chine was dead. It became an inert mass of ' iron, utterly useless for drawing off the gas from the casing of an oil-well. Vitality could be restored by replacing the parts thus removed, but In no other way."—/*. 534. Where complainants have failed to pro- duce satisfactory evidence apportioning damages and profits, and it seems Jikely that complainants can do so, it is proper to order a rehearing in damages and profits for that purpose. — lb. 535. Where the bill of complaint sets out an act of infringement, and the bill is of a certain date, complainants cannot recover for acts of in- fringement prior to that date. Eoalatype 3ti- graving Co. et al. v. Hoke et al., 30 Fed. Rep. 444.— Thayer, 1887. 536. Although evidence taken upon the trial of a case upon its merits may be used in an ac- counting before a master in damages and profits DATE OF PATENT. 247 upon proper notice at that time, it cannot be so used if first referred to in the argument. Bell et al. V. United States Stamping Co., 33 Fed. Rep. 549.— Wheeler, 1887. -537. Where a patent owner has given an exclu- sive license under a patent, and afterward brings suit for infringement, a royalty under that ex- clusive license is not a measure of profits and damages. — 1 b. 538. It is not to be inferred because a defend- ant has made sales of infringing articles, that the patent owner or his licensee would have made such sales if the defendant had not. Such a contention requires proof to be of any avail. — lb. 539. Damages will not be increased under Sec- tions 4919 and 4931 of the revised statutes on the suggestion in argument that it is obvious that the patent owner has sustained damages in con- sequence of the infringement beyond those al- lowed.— JJ. 540. " There is no question but that an estab- lished license fee is a proper measure of dam- ages for an infringement of the same extent. But this is not an unvarying rule, and does not carry the right of recovery beyond tlie actual damages when the circumstances vary and the actual damages are made to appear." Bates Adm'r v. St. JoTmsbury & Lalce Oliamplain B. B. Co., 33 Fed. Rep. 638.— Wheeler, 1887. 541. A regular license fee does not fix the question of damages to be paid by defendant where the time of use is a limited one. — lb. 543. " Although damages do not carry inter- est as such, interest may be allowed as a part of ■ the damages by the trier of fact in awarding damages. This is only a mode of stating the amount found. "—/6. 543. An assignment used the following lan- guage : " I, the said George F. McGinnis, as ad- ministrator of the estate of Edwin May, deceased, have sold, assigned, transferred, and set over, and do hereby sell, assign, transfer, and set over unto the said Sarah May, all the right, title, in- terest, claims, and demands whatsoever, which the said estate of said Edwin May, deceased, has in, to, by, under, and through the said improve- ments, and the letters-patent, and extensions thereof therefor aforesaid. ' ' This was held to carry the right to sue for past" damages and profits. May v. Saginaw Co., 82 Fed. Rep. 629. -Brown, 1887. 544. Previous to a certain date defendant had an exclusive license to make and sell certain pat- ented articles on a ten per cent royalty. Being afterward sued for infringement, the court found such ten per cent to be defendant's profits and , allowed no damages. Hammacher et al. v. Wil- son, 33 Fed. Rep. 796.— Colt, 1887. DATE OF PATENT. " Date of Patent " in the Patent Acts. Act approved July 4th, 1836. Section 8. This section provides, that" When- ever the applicant shall request it, the patent shall take date from the time of the filing of the specification and drawings, not, however, exceed- ing six mouths prior to the actual issuing of the patent ; and on like request, and the payment of the duty herein required, by any applicant, his specifications and drawings shall be filed in the secret archives of the office, until he shall furnish the model and the patent to be issued, not ex- ceeding the term of one year, the applicant be- ing entitled to notice of interfering applications. ' ' [Repealed July 8th, 1870.] Act approved March 3d, 1863. Sec. 3. And be it further enacted, That every patent shall be dated as of a day not later than six months after the time at which it was passed and allowed, and notice thereof sent to the ap- plicant or his agent. And if the final fee for such patent be not paid within the said six months, the patent shall be withheld, and the invention therein described shall become public property as against the applicant therefor • Provided, That in all cases where patents have been allowed previous to the passage of this act, the said six months shall be reckoned from the date of such passage. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 23. Andbe it further enacted. That every patent shall date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent ; and if the final fee shall not be paid within that period, the patent shall be withheld. [Repealed June 22d, 1874.] Act approved June 22d, 1874. Sec. 4885. Every patent shall bear date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent ; and if the final fee is not paid within that period, the patent shall be withheld. Cases. 1. After the lapse of thirteen years, it is too late to correct the antedate of a patent by reissue. Oashman in re, 1 MacArthur's P. C. 577. — Dun- lop, 1858. 3. Where the antedate of a patent is the delib- 248 DESIGN PATENT. erate act of the patentee, that antedate cannot afterward he changed by reissue. — lb. 3. The act of March 3d, 1861, which made the term of a patent seventeen years, did not do away with the provision for antedating patents contained in Section 8 of the act of July 4th, 1836. .Burdett v. Eatffy et al., 19 Blatoh. 1.— "Whbbleb, 1880. DECREE. Cases. 1. A decree may establish* the validity of a patent without giving it any construction, and restrain infringement in the same general terms. That is the common but not uniform practice, for it may be made more speciflc. Beady Hoofing Co. et al. V. Taylor et al., 15 Blatch. 94— Wheblbr, 1878. 2. Failure to mention, in a decree, that the same ■was by consent of parties spoken of as " unusual inadvertence." Washburn & Moen Mf'g Co. V. Caldwell Steel Barb Fence Co. et al., 1 Fed. Rep. 225.— Shipman, 1880. 3. Serious doubt expressed whether a court has power to vacate or modify a decree at the instance of a stranger to the suit. Motion to such efEect denied.— /ft. 4. A decree cannot be modified to suit defend- ant's fears as to something which may be done in the future. Page et al. v. Holmes B. A. T. Co., 18 Blatch. 118.— Blatchpord, 1880. 5. A decree determining the question of in- fringement, although interlocutory in form, is final in its nature. Cdburn et al. v. Schroeder et at., 19 Blatch. 493.— Wheeler, 1881. 6. The patent in question being a design patent for a carpet, the reference to the master ordered an account to be taken of the profits of the defend- ants from infringing upon the exclusive right of the plaintiffs " by the manufacture, use, and sale of carpeting bearing said patented design," and of the additional damages suffered by the plain- tiffs "by reason of said infringements." This was held to be a. proper form of decree. Dobson ef al. v. Dormanet al., 118 U. S. 10.— Sup. Ct. 1886. / / DESIGN PATENT. " Design Patent " in the Patent Acts. Act approved August 39th, 1843. Section 3. And be it further enacted. That any citizen or citizens, or alien or aliens, having resided one year in the United States, and taken the oath of his, her or their intention to become a citizen or citizens, who by his, her, or their awn industry, genius, efforts, and expense may have invented or produced any new and original de- sign for a manufacture, whether of metal or other material or materials, or any new and original design for the printing of woollen, silk, cotton, or other fabric, or any new and original design for a bust, statue, or bass-relief or compo- sition in alto or basso-rilievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted, or cast, or otherwise fixed on any arti- cle of manufacture, or any new and original shape or configuration of any article of manu- facture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or their appli- cation for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell and vend the same, or copies of the same, to others, by them to he made, used, or sold, may make application, in writing, to the Commissioner of Patents, express- ing such desire ; and the Commissioner, on due proceedings had, may grant a patent therefor, as in the case now of application for patent. Promded, That the fee in such cases, which, by the now existing laws, would be required of the particular applicant, shall be one half the sum, and that the duration of said patent shall be seven years, and that all the regulations and provisions which now apply to the obtaining or protection of patents, not inconsistent with the provisions of this act, shall apply to applications under this section. [Repealed July 8th, 1870.] Act approved March 2d, 1861. Sec. 11. And be it further enacted. That any citizen or citizens, or alien or aliens, having re- sided one year in the United States, and taken the oath of his or their intention to become a citizen or citizens, who, by his, her, or their own industry, genius, efforts, and expense may have invented or produced any new and original de- sign, or (for) a manufacture, whether of metal or other material or materials, and (an) original design for a bust, statue, or bass-relief or com- position in alto or basso-rilievo, or any new and original impression or ornament, or to be placed on any article of manufacture, the same being formed in marble or other material, or any new and useful pattern, or print, or picture, to be either worked into or worked on, or printed or painted, or cast, or otherwise fixed on any arti- cle of manufacture, or any new and original DESIGN PATENT. 249 shape or configuration of any article of manu- facture not known or used by others before his, her, or their invention or production thereof, and prior to the time of his, her, or tlieir appli- cation for a patent therefor, and who shall desire to obtain an exclusive property or right therein to make, use, and sell and vend the same, or copies of the same, to others, by them to be made, used, and sold, may make application, in writ- ing, to the Commissioner of Patents, expressing such desire ; and the Commissioner, on due pro- ceedings had, may grant a patent therefor, as in the case now of application for a patent, for tlie term of three and one half years, or for the term of seven years, or for the term of fourteen years, as the said applicant may elect in his ap- plication : Provided, That the fee to be paid in such application shall be, for the term of three years and six months, ten dollars ; for seven years, fifteen dollars ; and for fourteen years, thirty doUars : And provided, That the patentees of designs under this act shall be entitled to the extension of their respective patents for the term of seven years from the day on which said pat- ent shall expire, upon the same terms and re- strictions as are now provided for the extension of letters-patent. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 71. And be it furtlisr enacted. That any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manufacture, bust, stat- ue, alto-rilievo, or bass-relief ; any new and origi- nal design for the printing of woollen, silk, cotton, or other fabrics ; any new and original impres- sion, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture ; or any new, useful, and original shape or configura- tion of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon payment of the duty required by law, and other due proceedings had, the same as in the cases of inventions or discoveries, obtain a patent there- for. Sec. 73. And be it farther enacted. That pat- ents for designs may be granted for the term of three years and six months, or for seven years, or for fourteen years, as the applicant may, in his application, elect. Sbc. 74. And be it further enacted. That pat- entees of designs issued prior to March two, eighteen hundred and sixty-one, shall be entitled to extensions of their respective patents for the term of seven years, in the same manner and under the same restrictions as are provided for the extension of patents for inventions or dis- coveries issued prior to the second day of March, eighteen hundred and sixty-one. Sbc. 75. And be it farther enacted. That the following shall be the rates of fees in design cases : For three years and six months, ten dollars ; for seven years, fifteen dollars ; for fourteen years, thirty dollars. For all other cases in which fees are required, the same rates as in the case of inventions or discoveries. . , Sec. 76. Be it further enacted. That all the regulations and provisions whicli apply to the obtaining or protection of patents for inven- tions or discoveries, not inconsistent with the provisions of this act, shall apply to jsatents for designs. [Repealed June 22d, 1874.] Act approved June 33d, 1874. Sec. 4929. Any person who, by his own in- dustry, genius, efforts, and expense has invented and produced any new and original design for a manufacture, bust, statue, alto-rilievo, or bass- relief ; any new and original design for the print- ing of woollen, silk, cotton, or other fabrics ; any new and original impression, ornament, patent (pattern) print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture ; or any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or pro- duction thereof, or patented or described in any printed publication, may, upon payment of the fee prescribed, and other due proceedings had, the same as in cases of inventions or discoveries, obtain a patent therefor. Sec. 4931. Patents for designs may be granted for the term of three years and six monthsr or for seven years, or for fourteen years, as the ap- plicant may, in his application, elect. Sec. 4982. Patentees of designs issued prior to the second day of March, eighteen hundred and sixty-one, shall be entitled to extension of their respective patents for the term of seven years, in the same manner and under the same restrictions as are provided for the extension of patents for inventions or discoveries issued prior to the second day of March, eighteen hundred and sixty-one. Sec. 4933. All the regulations and provisions which apply to obtaining or protecting patents for inventions or discoveries, not inconsistent with the provision of its title, shall apply to pat- ents for designs. Sec. 4934. The following shall be the rate for patent fees ■ In design cases : For three years and six 250 DESIGN PATENT. months, ten dollars ; for seven years, fifteen dollars ; for fourteen years, thirty dollars. Cases. 1. The allowance of two years' public use prior to application applies to design patents. Boot V. Ball et al., 4 McLean, 177.— McLean, 1846. 2. If a patented design and figures are sub- stantially adopted, the patent is infringed. —lb. 3. " Where ornaments are used for a stove, it is infringement to adopt the design so as to pro- duce substantially the same appearance."— /J. 4. In a patent the claim was : " The radially formed ornaments on the face of the molds or blocks of whidi the button is formed, combined with the mode of winding the covering of the same, substantially as set forth." Thereof the court said : ' ' The mode of winding claimed to be new is the arrangement of the different colored threads in the process, so as to produce what is called ' the radially formed ornaments on the face of the button.' " Booth v. Oarelly et al., 1 Blatch. 247.— Nelson, 1847. 5. The allowance of two years' public use prior to application for patent applies to design patents. — lb. 6. It seems that an arm for sewing-machine parts, in the shape of the letter G, amounts to patentable design. Oibbs v. Ellithorp, 1 Mac- Arthur's P. C. 703.— DuNLOP, 1859. 7. Complainant's patent for " the design and configuration of the reel," was for a reel for ruf- fles, consisting of two parallel disks of pasteboard connected by four bits of wood, the pasteboard being cut in the shape of a rhombus with the angles rounded. Thereof the court said : " In this case the reel itself, as an article of manu- facture, is conceded to be old, and not the sub- ject of a patent. The shape applied to it by complainant is also a well-known mathematical figure. Now, although it does not appear that any person ever before applied this particular shape to this jDarticular article, I cannot think that the act quoted above was Intended to se- cure to the complainant an exclusive right to use this well-known figure in the manufacture of reels. The act, although it does not require utility in order to secure the benefit of its pro- visions, does require that the shape produced shall be the result of industry, effort, genius, or expense, and must also, I think, be held to re- quire that the shape or configuration sought to be secured shall at least be new and original as applied to articles of manufacture. But here the shape is a common one in many articles of manufacture, and its application to a reel cannot fairly be said to be the result of industry, genius, effort, and expense. No advantage whatever is pretended to be derived from the adoption of the form selected by the complainant, except the incidental one of using it as a trade-mark. Its selection can hardly be said to be the result of effort even ; it was simply an arbitrary, chance selection of one of many well-known shapes, all equally well adapted to the purpose." Wooster V. Crane etal., 5 Blatch. 382. — Benedict, 1865. 8. The claims of the patent in suit were : " Mrst, we claim constructing the bed of the elastic material used in graining machines, in the form herein shown, substantially as and for the purpose specified. Second, we claim arrang- ing the elastic material aforesaid, whether curved or rectangular in form, in a series of distinct staves or designs, substantially as and for the purpose herein shown and set forth. " This was held not to be a lawful claim for a design patent. O larky. Bousfield, 10 Wall. 133.— Sup. Ct. 1869. 9. It will be seen by a reference to Section 11, of the act of 1861, that a claim patentable under it " must be a claim for an original design or im- pression, or ornament, or pattern, or picture, and the like, wholly irrespective of the means of producing it. " — lb. 10. "The same principles which govern in determining the question of infringement in re- spect to a patent, for an invention connected with the operation of machinery, must govern in de- termining the question of infringement in respect to a patent for design. A design for the config- uration of an article of manufacture is embraced within the statute, as a patentable design, as well as a design for an ornament to be placed on an article of manufacture. The object of the former may solely be increased utility, while the object of the latter may solely be increased grati- fication to a cultivated taste, addressed through the eye. It would be as reasonable to say that utility should be the test of infringement in the first case, as to say that equal appreciation by the eye should be the test of infringement in the lat- ter case. There must be a uniform test, and that test can only be, as in the case of a patent in re- spect to machinery, substantial identity, not in view of the observation of a person whose ob- servation is worthless, because it is casual, heed- less, and unintelligent, and who sees one of the articles in question at one time and place, and the other of such articles at another time and place, but in view of the observation of a person versed in the business of designs in the particu- lar trade in question ; of a person engaged in the manufacture and sale of articles containing such designs ; of a person accustomed to compare such DESIGN" PATENT. 251 designs one with another, and who sees and ex- amines the articles containing them side by side. The question is not whether one design will be mistaken for another by a person who examines the two so carelessly as to be sure to be deceived, but whether the two designs can be said to be substantially the same when examined intelli- gently side hj^ side. There must be such a com- parison of the two features which make up the two designs. As against an existing patented design, a patent for another design cannot be withheld because, to a casual observer, the gen- eral appearance of the latter design is so like that of the earlier one as to lead him, without proper attention, to mistake the one for the other. The same test must be applied to the question of infringement. " Ooi-Jiam liTfg Co. v. White, 7 Blatch. 513.— Blatchfoed, 1870. 11. "A patent for a design, like a patent for an improvement in machinery, must be for the means of producing a certain result or appear- ance, and not for the result or appearance itself. ' ' " Even if the same appearance is produced by another design, and if the means used in such other design to produce the appearance are sub- stantially different from the means used in the prior patented design to produce such appear- ance, the latter design is not an infringement of the patented one. ' ' — lb. 13. " The acts of Congress which authorize the grant of patents for designs were plainly in- tended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that, not as an abstract impres- sion or picture, but an aspect given to those ob- jects mentioned in the acts." Oorham M'f'g Co. V. White, 14 Wallace, 511.— Sup. Ct. 1871. 13. In a patentable design " the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture or article to which it may be applied or to which it gives form. The law manifestly contemplates that giving certain new and original appearances to a patented article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. " " Manifestly the mode in which those appearances are produced has very little, if anything, to do with giving increased salable- ness to the article. It is the appearance itself which attracts attention and calls out favor or dislike. It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recom- pense. The appearance may be the result of pe- culiarity of configuration, or of ornament alone. or of both conjointly, but, in whatever way pro- duced, it is the new thing or product which the law regards. To speak of the invention as a combination or progress, or to treat it as such, is to overlook its peculiarities. " " The control- ling consideration is the resultant effect." " "What is the true test of identity of design ? Plainly it must be sameness of apijearance, and mere difference of lines in the drawing or sketch, a greater or smaller number of lines, or slight variations in configuration, if not sufficient to change the effect upon the eye, will not destroy the substantial identity. An engraving which has many lines may present to the eye the same picture and to the mind the same conception as another with much fewer lines. The design, however, would be the same. So a pattern for a carpet or a print may be made up of wreaths of flowers arranged in a particular manner. An- other carpet may have similar wreaths, arranged in a like manner, so that none but very acute observers could detect a difference. Yet in the wreaths upon one there may be fewer flowers, and the wreaths may be placed at wider distances from each other. Surely in such a case the de- signs are alike. The same conception was in the mind of the designer, and to that conception he gave expression." — li. 14. "If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, the two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one suppos- ing it to be the other, the first one patented is infringed by the other." — lb. 15. Enamelling of metals being old, it is not patentable design to enamel metals in imitation of granite. Neidringhaus v. Com'r, 2 Mac- Arthur, 149. --MacArthur, 1875. 16. It is very doubtful whether making sieves of a flaring shape, so that they can be nested, forms patentable subject-matter for a design patent. Adams & Westlake M'fg Co. v. St. Louis Wire Goods Co., 3 Banning & Arden, 77. — Treat, 1877. 17. The claim of complainants' design patent in suit was : " As a design for a cheese- safe, the rectangular cage shown, having two vertical panels on each wall, a moulded top A, and a moulded base A'." The only novelty in this patented design was the use of an ogee moulding about the top and bottom, and the combination of this with panelled sides. Mouldings of this description had been used for a long time, not only in architecture, but upon articles of furni- ture and in the decoration of interiors. The ap- plication of the same to a cheese-safe was held 253 DESIGN PATENT. not to amount to patentable design. Northrup et al. V. Adams, 3 Banning & Arden, 567. — Brown, 1877. 18. It maybe questionable whether claims for the separate parts of a design may be maintained. Perry etal. v. Starrett, 3 Banning & Arden, 485. — "Whbelbk, 1878. 19. If all that the inventor of the design of a stove had done had been to take the legs of one stove, the base of another, etc., and unite them in one structure, he would not have produced a new and patentable design ; but where the new union was brought about by the use of new forms, the resulting design was held patentable. —n., 20. " To constitute a new design that would be patentable as such, it must be so different from all others existing before as to appear to be such to ordinary observers. " — lb. 81. In determining the question of infringe- ment of a design patented, the most potent evi- dence is the comparison of the two designs. They are alike in substance if the general effect is the same, even though there are minor differ- ences in form and ornamentation, especially if it requires a study to point out the differences. —lb. 22. Where a patent has been granted for a new article of manufacture, it cannot be construed to be a design patent. Cone v. Mm-gan Enmlope Co., 4 Banning & Arden, 107. — Lowell, 1879. 23. "The fact that the original mechanical patent was issued more than two years after the design patent is of no importance," the latter covering shape, the former mechanical combina- tion, and the former being applied for within two years after the date of the latter. Collender V. Qriffithet al., 18 Blatch. 110. — Blatchford, 1880. 24. The patent in suit was " for a design for a card of buttons, divided into spaces, covered with foil, by narrow bands, with a dozen of pearl buttons in rows of three by four to each space." Said the court : " The design does not apply to the manufacture proper, but only to the arrangement of it for sale. . . . Merely changing the mode of keeping and presenting an article for sale without changing its form or appearance will not support a patent for de- sign. ' ' Pratt et al. v. Bosenfield et al., IS Blatch. 234.— Whbblbr, 1880. 25. " Cards for buttons, faced with foil and divided into spaces by bands, were well known and in common use. Those for pearl buttons may not have been divided into dozens in rows of three by four, but they were divided so that dozens could be readily cut from the card, in two rows of six and one of twelve ; and there were cards divided into spaces for several dozens by such bands as the patent describes ; and cards of cloth buttons spaced for dozens in rows of three by four. With these things known, there was nothing rising to the level of inventive skill in arranging pearl buttons by dozens on cards, in three rows of four. " — lb. - 26. By the court : " A question is made by the defendant Whether an inventor is not to be presumed to abandon his design when he exhib- its it in the drawings of a mechanical patent. I do not see why this consequence should follow until the design has been in use for two years ; but I do not decide this point." Burton v. GreenviUe, 3 Fed. Rep. 643.— Lowell, 1880. 27. A person exhibited publicly to a commit- tee and certain inhabitants, " more than two years before the application for complainant's design patent," a drawing of a lamp-post, which he was ready to sell them, and " which is like the patented and the infringing design." Such person testified "that he had made others like it, excepting the ornament on top, which forms no part of the plaintiff's claim," some months previous. The lamp-posts complained of were put up twenty months before application. Pub- lic use held to be established. — lb. 38. " Regulations and provisions applicable to the obtaining or prohibition of patents for inven- tions or discoveries, not inconsistent with the existing patent act, apply to designs, without modification or variation." Miller et al. v. Smith et al., 5 Fed. Rep. 359.— Clifford, 1880. 29. By the court : " He points out the differ- ence between figures in actual relief, such as are the figures of the patent in question, and figures where the effect is produced upon the eye merely by linear representation or artificial shading, as shown in several examples given in his testi- mony. " . . . " Nothing of the exact kind is shown in these exhibits." (This concerning a design patent.)— J6. 30. " Inventors may, if they can, keep their inventions secret, and if they do, it is a mistake to suppose that any delay to apply for a patent will forfeit their right to the same or present any bar to a subsequent application. Nor does any different rule prevail in the case of a design pat- ent. Delay less than for a period of two years constitutes no defence in the case." — Tb. 31. In a suit for infringement of a design pat- ent, for rustic letters used in jewelry, defend- ants insisted that the claim was bad, because it embraced more than one letter of the alphabet, which proposition, said the court, " is so obvi- ously without merit that it is not deemed neces- DESIGN PATENT. 253 sary to enter into any discussion of tbe topic. ' ' —lb. 33. Tlie test of the infringement of a design patent is the determination of tlie question, whether the two designs are such as to be mis- taken one for the other by "an ordinary ob- server giving such attention as a purchaser usu- ally gives." — Ih. 33. By the court : " The wings of the bird are in a different position from those of the bird in the plaintiff's setting, and the upper leaf is turned differently ; but the two leaves below the bird in the defendants' setting are in white or silver color, and somewhat resemble the diamonds upon that part of the plaintiff's, and altogether more is required than to observe and consider the artistic effect of each to bring these differences to notice. Looked at as ornaments, desirable for their beauty or appropriateness, according to the taste of the wearer, these differences in the detail become immaterial." Wood v. Dolby et al., 19 Blatch. 214.— Wheeler, 1881. 34. Complainants, in a suit upon a design pat- ent, put in evidence, as an infringement, an arti- cle made by defendant, without testimony that the article was an infringement. Defendant contended that this was insufficient. The court said: "In view of the proper test, as above given " (referring to QorJmm M'fg Co. v. White, 14 "Wall. 511), " and of the simple character of the designs in the present case, the absence of any testimony as to identity, does not make it improper for the court in this case to compare the defendants' nubia with the patents, as to design, and determine the question of identity from such comparison. It is not intended to imply that the practice can be extended to any other patent than one for a design, or that it ought to be extended to all design patents." Jennings et al. v. Kibbe, 20 Blatch. 353. — Blatchford, 1882. 35. Defendant 's show-case being a servile copy of what was shown in complainants' design, " excepting a slight inclination backward, hard- ly perceptible to the naked eye, of the glass constituting the front of the elevated portions of the case," was held to be an infringement. Lelmbeuter et al. v. noUliaus, 105 U. S. 94. — Sup. Ct. 1882. 36. A design, in order to be patentable, need not be more graceful or beautiful than older de- signs. — lb. 37. "In the matter of ornamentation, mere juxtaposition of old forms is doubtless sufficient to authorize a patent for an ornament when, by means of such juxtaposition, accompanied by industry, genius, effort, and expense, the old forms are made to become component parts of an ornament substantially new in its effects. But the result of the industry, genius, effort, and expense employed must ... be a single orna- ment, which, taken as a whole, can be consid- ered to be the embodiment of a new idea in orna- mentation. Tlie amount of the novelty may be small, but the effect of the ornament must, to some extent at least, be new. The ornament may, in this sense, be new and ornamental, al- though all the forms used in its composition are old and well-known forms of ornamentation." Simpson et al. v. Bams, 20 Blatch. 413. —Bene- dict, 1882. 38. The " cap of a newel post is a manufac- ture within the meaning of the statute." — lb. 39. A claim to a certain part of a newel post held void as being merely for an aggregation, without any new ' ' combined effect. ' ' The claim for the design for the whole newel post sustained. — lb. 40. To bring distinct and well-known orna- ments into juxtaposition without the production of a new " combined effect" does not constitute patentable design. — lb. 41. Design patents '" differ from patents for inventions or discoveries in this respect, that they have reference to appearance rather than utility. The object is to encourage the arts of decoration more than the invention of useful jjroducts. A picture or design that merely pleases the eye is a proper subject for such a pat- ent, without regard to the question of utility, which is always an essential ingredient in an in- vention or discovery patent." Tlieberathv. B G. Harness Trimming Co., 15 Fed. Rep. 246. — Nixon, 1883. 42. By the court: "There is . . no founda- tion for the argument of the learned counsel for the complainant, that design patents are not void from being in public use or on sale for more than two years prior to the application of a pat- ent. " — lb. 43. A patented design was for the shape or configuration of a series of patterns for gored skirts, printed upon a piece of fabric, to be cut apart and sewed together in the making of the skirts. The patent was not attacked on the ground of its covering improper matter for a de- sign patent, but the court remarked : " The in- vention would seem to have been better adapted to a patent for a manufacture than to one for a design." DryfossN. Friedman et al., 21 Blatch. 563.— Wheeler, 1884. 44. "The difference necessary to takeaway their identity in law is understood to be such ap- pearances as would attract the attention of an 254 DESIGN PATENT. ordinary observer, giving such attention as a purchaser usually gives. This, of course, means purchasers of the article in question for the pur- poses for which they were intended and are pur- chased." — Ih. 45. "There doubtless might, be an infringe- ment of a patented design without taking the whole of it, but in such cases the part taken must be a part covered by the patent." — lb. 46. Complainant's design patent for a watch- case consisted in the representation of a loco- motive engine and tender upon a railroad track, with ornamental plants in the foreground, the whole surrounded by a ring of dots and an ornamental border. There were two claims : one for the engine and tender on the track, and the other for the same surrounded by the ring of dots and ornamental border. The design differed chiefly from the prior art in that the figures were made in relief, and defendants' design had that feature ; but complainant's patent did not describe them as being in relief nor so claim them, and it was held that defendants' design did not, therefore, come within the complainant's patent. Untermeyer v. Jeannot et al., 20 Fed. Rep. 503.— Wheeler, 1884. 47. " It is by no means necessary that the pat- ented thing should be copied in every particular. If the infringing design has the same general appearance, if to the eye of an ordinary person the two are substantially similar, it is enough. It is of no consequence that persons skilled in the art are able to detect differences. Those who have devoted time and study to the subject, who have spent their lives in dealing in articles simi- , lar to those in controversy, may see at a glance features which are wholly unimportant and un- observed by those whose pursuits are in other directions, and who are attracted only by gen- eral appearances. If the resemblance is such that a purchaser would be deceived, it will not aid the infringer to show that he has deviated slightly from a straight line in one place and from a curved line In another, or that he has added or omitted something which an expert can discover." Thompkinson v. Willets Wfg Co., 23 Fed. Rep. 895.— Coxe, 1884. 48. Complainant had two design patents of the same date, one for a table fork and one for a spoon, in both of which the main feature of the design was described in the words, "With the outline edge of the plate turned backward at a nearly uniform distance from its front." The court held such designs patentable. Foster v. Orosdn etal., 28 Fed. Rep. 400. — Cakpentek, 1885. 49. " Design, of course, relates solely to the appearance of the article to the ordinary pur- chaser ; and when the question is whether a difference of design be substantial and valuable, surely there can be do tests better than the prac- tical test which is furnished by observing the effect of the two designs upon the appreciating observation of the purchasing public." — lb. 50. In a suit upon a design patent, the find- ings of the Circuit Court allowed as damages ' ' the entire profit of the plaintiffs per yard, in the manufacture and sale of carpets of the pat- ented designs, and not merely the value which the designs contributed to the carpets. There was no evidence as to that value." The Su- preme Court said : " Approval of the particular design or pattern may very well be one motive for purchasing the article containing it, but the article must have intrinsic merits of quality and structure to obtain a purchaser, aside from the pattern or design ; and to attribute in law the entire profit to the pattern, to the exclusion of the other merits, unless it is shown by evidence as a fact that the profit ought to be so attributed, not only violates the statutory rules of ' actual damages ' and of ' profits to be accounted for, ' but confounds all distinctions between cause and effect." Dobson et al. v. Hartford Carpet Co., 114 TJ. S. 439.— Sup. Ct. 1885. 51. "If the Patent Office, in view of the ques- tion of fees, grants a patent for an entire design, with a claim for that, and a claim for each one of various constituent members of it, as a sepa- rate design, we see no objection to it, leaving the novelty of each part and the validity of the patent open to contestation. The mere joinder of such claims in one grant does not, per se, in- validate the patent, or any particular claim, at the objection of a defendant." — lb. 52. A claim for " a design for a carpet, sub- stantially as shown," is a good form of claim in a design patent. — lb. 58. Complainants' patented design was for a lace fabric having a fringe made of a series of stems connected to the fabric and not to each other, with loops at both sides of a central stem or rib along its entire extent. Thereof the court said : ' ' The patent is not for a design for a nubia, but for a fringed lace fabric, and the novelty of the patented design appertains to the fringe and not to the rest of the fabric by the terms of the patent. Nubias with this fringe might appear to be the same as those of the patented fringe, if the fringe should not be observed as such ; but observation of that would discover the difference readily." Thereupon defendants were held not to infringe. Jennings et al. v. Kibbe et al.,2A Fed. Rep. 697.— Wheeler, 1885. DESIGN PATENT. 255 54. As to infringement of design patents, " it is enough if the resemblance is such as to deceive the ordinary observer. " Dreyfus v. Schneider, 25 Fed. Rep. 481.— Colt, 1885. 55. The claim in a patent for a design for a carpet was : " The configuration of the design hereunto annexed when applied to carpeting." The design was illustrated by a photograph. It was contended that this form of claim was not sufficient. The court held it to be sufficient. Dobson et al. v. Dorman et al., 118 U. S. 10. — Sup. Ct. 1886. 56. The claim in a design patent was ; " The configuration of the design hereunto annexed when applied to carpeting." Thereof the court said : " Undoubtedly the claim in this case cov- ers the design as a whole and not any part of it, as a part, and it is to be tested as a whole as to novelty and infringement." — IT). 57. The patent in question being a design pat- ent for a carpet, the reference to the master ordered an account to be taken of the profits of the defendants from infringing upon the exclu- sive right of the plaintiffs " by the manufacture, use, and sale of carpeting bearing said patented design," and of the additional damages suffered by the plaintiffs ' ' by reason of said infringe- ments. " This was held to be a proper form of decree. — lb. 58. A'patent for a design for a carpet being in question, and one dealer having testified that he thought it would be almost impossible for any one who had not seen the two carpets together to tell them apart, and another witness having testified that in his opinion not one customer in twenty-five would know the difference, and there being other testimony tending to show the same results — while there was evidence contra- dictory of this— the Supreme Court held that it could not, in the absence of ocular inspection, say that the Circuit Court erred in finding in- fringement. — lb. 59. " The plaintiff must show what profits or damages were attributable to the use of the in- fringing design." — lb. 60. The claim of a design patent was for "a new and ornamental design for a curtain and loop. Consisting of an ornamental chain in con- nection with a curtain adapted to be gathered to the side of the window and be held by such chain, substantially as described." The design was illustrated by a photograph. The court said : " The patent is for any ornamental metal- lic chain used to loop curtains ;" and the court further said, " the mere substitution of one ma- terial for another in the construction of, or for the purposes of an ornament, the ornament to be of any approved form, cannot properly be patentable." The court held the patent void. Post et al. V. T. 0. JRichards Hardware Co., 26 Fed. Rep. 618.— Shipmak, 1886. 61. The claim of a design patent was : "'The design for a banner rod, herein shown and de- scribed, the same consisting of a conventional imitation of a straight twig with the bark on, and slanting by cut ends.' " Thereof the court said : " I have great doubt whether there is any- thing which shows genius, or which indicates the work of an inventive mind, and therefore whether there is anything patentable, in merely making a banner rod to imitate measurably a straight twig with the bark on. This natural and simple design for a banner rod would, I think, readily suggest itself to an upholsterer. There is so much reason to suppose that the sec- tion which relates to design patents demands the exercise of more genius than is exhibited in the patented design, that the motion should be de- nied." Osborn v. Juddet al., 39 Fed. Rep. 96. — Shipman, 1886. 62. The claim of the patent in suit was : " Tlie design for an easel herein shown and described, the same consisting of the upright standards of an easel crossing each other near their upper ends, and representing the stems and flowers of the cat- tail plant or flag." Easels made of nat- ural cat-tails crossing each other near the upper ends were old, in view of which the patented design was limited to the mode of crossing the standards described in the patent. In the re- spondent's design the standards were not crossed, but they were held together near the top by a band, from which point, by bending, they were spread out so as to present a fan-like appear- ance. Respondent was held not to infringe. Crocker v. Cutter Tower Co., 29 Fed. Rep. 456. —Colt, 1886. 63. The claims of the design patent in suit were : " The design for a photographic album leaf, consisting of the roughened frame A, en- closing the pocket or pockets B, as shown and described. (2) The design for a photo- graphic album leaf, consisting of the exterior frame C, the roughened frame A inside of the frame C, and the pocket or pockets B in- side the roughened frame A, as shown and de- scribed." The court described the design as follows : " The frame A is a border of grained or roughened surface surrounding, for a certain distance, the pocket or place to hold pictures, and the frame is a smooth border between A and the edges of the leaf. These borders have the effect of mats or frames for the picture. The drawings of the patent represent the pocket as 256 DISCLAIMER. apparently raised above the surrounding sur- face, and the border C as. raised above the frame A. The defendant sells albums having the leaves ornamented with boarders A and C, surround- ing a pocket not raised, but even with the surface of the sheet. The pasteboard in his leaves ex- tends nearly to the pocket, so that the border C is upon a level with A. " Then the court said : " If the patent is limited to the design which the patentee made, and which is shown in the draw- ings, and which consists of an exterior plain, ap- parently elevated, border, enclosing a pebbled border, which encloses a pocket apparently raised, thus making apparently three mats or frames for the picture, it is a good design pat- ent. Such a design has a pleasing effect which is peculiar to itself, seems to be novel, and has the necessary element of invention." MeersY. Kelly, 31 Fed. Rep. 153.— Shipman, 1887. 64. The claims of the design patent in suit were : " (1) A design for a rubber mat, consist- ing of corrugations, depressions, or ridges in P3,Tallel lines, combined or arranged relatively, substantially as described, to produce variegated, kaleidoscopic, moire, stereoscopic or similar effects, substantially as set forth. (2) A design for a rubber mat, consisting of a series of paral- lel corrugations, depressions, or ridges, the lines of the said corrugations being deflected at one or more points, substantially as set forth. (3) A design for a rubber mat, consisting of a series of parallel corrugations, depressions, or ridges, arranged in sections, the general direction of the corrugations in one section making angles with or being deflected to meet those of the corruga- tions in the contiguous or other sections, sub- stantially as described." Thereof the court said : " The patent is an attempt to secure to the patentee a monopoly of all ornamentation upon rubber mats by which variations of light and shade are produced by a series of ridges and depressions, without regard to any particu- lar arrangement or characteristics of the lines except that they are to be parallel. Although there is an illustration in the drawing, and al- though each claim is for a design ' substantially as described,' the language of the specification is carefully expressed so as not to restrict the claims to the design shown in the drawings, but so that the first claim shall include every variety which can be produced by the arrangement of corrugations, depressions, or ridges in parallel lines ; the second, all obtainable when, by the ar- rangement, the corrugations are deflected ; and the third, all obtainable when, by the arrange- ment of the corrugations in sections, those of one section make an angle with those in the con- tiguous or other sections." Nem York Belting & Packing Go. v. New Jersey Car Spring & Rub- ber Co., 30 Fed. Rep. 785.— Wallace, 1887. ' 65. "It is not novelty which will sustain a patent to transfer to rubber, or to a rubber mat, an effect or an impression to the eye which has been produced upon other materials or articles by contrast or variation of light and shade. The design of this patent is not new, unless it em- bodies a new impression or efEect produced by an arrangement or configuration of lines, which introduces new elements of color or form." — lb. DISCLAIMER. "Disclaimbr" ln the Patent Acts. Act approved March 3d, 1837. Section 7. And be it further enacted. That whenever any patentee shall have, through in- advertence, accident, or mistake, made his speci- fication of claim too broad, claiming more than that of which he was the original or first invent- or, some material or substantial part of the thing patented being truly and justly his own, any such patentee, his administrators, executors, and assigns, whether of the whole or of a sec- tional interest therein, may make a disclaimer of such parts of the thing patented as the dis- claimant shall not claim to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent, which disclaimer shall be in writing, attested by one or more wit- nesses, and recorded in the Patent OfBce, on payment by the person disclaiming, in manner as other patent duties are required by law to be paid, of the sum of ten dollars. And such dis- claimer shall thereafter be taken and considered as a part of the original specification, to the ex- tent of the interest which shall be possessed in the patent or right secured thereby by the dis- claimant and by those claiming by or under him subsequent to the record thereof. But no such disclaimer shall affect any action pending at the time of its being filed, except so far as may re- late to the question of unreasonable neglect or delay in filing the same. Sec. 9. And be it further enacted, anything in the fifteenth section of the act to which this is additional to the contrary notwithstanding, That, whenever by mistake, accident, or inad- vertence, and without any wilful default or intent to defraud or mislead the public, any patentee shall have in his specification claimed to be the original and first inventor or dis- coverer of any material or substantial part of the thing patented of which he was not the DISCLAIMER. 257 first and original inventor, and shall have no legal or just right to claim the same, in every such case the patent shall be deemed good and valid for so much of the invention or dis- covery, and shall be truly and ioraa_^£fe his own : Provided, it shall be a material or substantial part of the thing patented, and be definitely dis- tinguishable from the other parts so claimed without right, as aforesaid. And every such patentee, his executors, administrators, and as- signs, whether of the whole or of a sectional in- terest therein, shall be entitled to maintain a suit at law or in equity on such patent for any in- fringement of such part of the invention or dis- covery as shall be bona fide his own, as aforesaid, notwithstanding the specification may embrace more than he shall have any legal right to claim. But in every such case in which a judgment or verdict shall be rendered for the plaintiff, he shall not be entitled to recover costs against the defendant, unless he shall have entered at the Patent Office, prior to the commencement of this suit, a disclaimer of all that part of the thing patented which was so claimed without right. Provided, however. That no person bringing any such suit shall be entitled to the benefits of the provisions contained in this section, who shall have unreasonably neglected or delayed to enter at the Patent Office a disclaimer, as aforesaid. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 54. And be it further enacted, Tha.t'wlaieD.- ever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive inten- tion, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that part which is truly and justly his own, provided the same is a material or substantial part of the thing patented ; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, may, on payment of the duty required by law, make a disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or as- signment, stating therein the extent of his inter- est in such patent ; said disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office, and it shall there- after be considered as a part of the original specification to the extent of the interest possessed by the claimant and by those claiming under him after the record thereof. But no such disclaimer shall aflfect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay ia fil- ing it. Skc. 60. And be it further enacted. That when- ever, through inadvertence, accident, or mistake, and without any wilful default or intent to de- fraud or mislead the public, a patentee shall have [in his specification] claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, as aforesaid, every such patentee, his executors, administrators, and assigns, whether of the whole or any special interest in the patent, may maintain a suit at law or in equity, for the infringement of any part thereof, which was bona fide his own, provided that it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the parts so claimed, without right as afore- said, notwithstanding the specifications may em- brace more than that of which the patentee was the original or first inventor or discoverer. But in every such case in which a judgment or de- cree shall be rendered for the plaintiff, no> costs shall be recovered unless the proper disclaimer has been entered at the Patent Office before the commencement of the suit, nor shall he be en- titled to the benefits of this section if he shall have unreasonably neglected or delayed to enter said disclaimer. [Repealed June 33d, 1874.] Act approved June 33d, 1874. Sec. 793. When judgment or decree is ren- dered for the plaintiff or complainant, in any suit at law or in equity, for the infringement of a part of a patent in which it appears that the patentee, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patent- ed of which he was not the original and first inventor, no costs shall be recovered, unless the proper disclaimer, as provided by the patent laws, has been entered at the Patent Office be- fore the suit was brought. Sec. 4917. Whenever, through inadvertence, accident, or mistake, and without any fraudu- lent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his pat- ent shall be valid for all that part which is truly and justly his own, provided the same is a ma- terial or substantial part of the thing patented ; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stat- ing therein the extent of his interest in such pat- ent. Such disclaimer shall be in writing, at- 258 •DISCLAIMER tested by one or more -witnesses, and recorded in the Patent OflSce ; and it shall thereafter be con- sidered as a part of the original specification to the extent of the interest possessed by the claim- ant and by those claiming under him, after the record thereof. But no such disclaimer shall affect any action pending at the time of its be ing filed, except so far as may relate to the ques- tion of unreasonable neglect or delay in filing it. Sec. 4932. "Whenever, through inadvertence, accident, or mistalie, and w^ithout any wilful default or intent to defraud or mislead the pub- lic, a patentee has, in his siDeciflcation, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, every such patentee, his executors, administrators, and assigns, •whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity, for the infringement of any part thereof, which was bona fide his own, if it is a material ■and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, notwithstanding the specifications may embrace more than that of which the pat- entee was the first inventor or discoverer. But in every such case, in which a judgment or de- cree shall be rendered for the plaintiff, no costs shall be recovered unless the proper disclaimer has been entered at the Patent Office before the commencement of the suit. But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to en- ter a disclaimer. Cases. 1. A disclaimer in a patent is binding on the patentee. Whitney et al. v. Emmett et al., 1 Bald. 303.— HoPKiNsoisr and Baldwin, 1831. 3. Section 7, of the act of 1837, Chapter 45, applies solely to suits pending when the dis- claimer is filed. Section 9 applies solely to suits brought after the disclaimer is filed. Wyeth et al. V. Stone etal., 1 Story, 373.— Story, 1840. 3. Disclaimers may cure mistakes of law as well as mistakes of fact. — lb. 4. By the court : " It does not seem to me that a court of equity ought to interfere to grant a perpetual injunction" where a disclaimer is nec- essary, ' ' whatever might be the right and remedy at law, unless a disclaimer has been in fact filed at the Patent Office before the suit is brought." —n. 5. " A disclaimer to be effectual, for all in- tents and purposes, under the act of 1837, Chap- ter 45, paragraphs 7 and 9, must be filed in the Patent Office before the suit is brought. If filed during the pendency of the suit, the plaintiff will not be entitled to the benefit thereof in that suit. But if filed before the suit is brought, the plaintiff will be entitled to recover costs in that suit, if he should establish at the trial that the part of the invention not disclaimed has been in- fringed by the defendant. Where a disclaimer has been filed either before or after the suit is brought, the plaintiff will not be entitled to the benefit thereof if he has unreasonably neglected or delayed to enter the same in the Patent Office. But such an unreasonable neglect or delay will constitute a good defence and objection to the suit." Beed v. Cutler et al., 1 Story, 590.— Stokt, 1841. 6. The question whether a disclaimer is filed within a reasonable time is not a mere matter of law, but is to be judged with reference to all the circumstances in evidence. Wa£iburnetal.Tr. Gould, 3 Story, 133.— Story, 1844. 7. Where, in a disclaimer, the administrator, in whose name the patent was extended, ex- pressly stated that he was the patentee and re- ferred to the patent as showing his interest, this was held sufficient under the law upon that point. Brooks et al. v. JenMnsetal.,Z'KdLesiD., 433.— McLean, 1844.^ 8. A disclaimer under Section 7, of the act of 1837, should not only disclaim what is not new, but should state what is still claimed as new. Lippeneott v. Kelly, 1 West. Law Jour. 513.— Irvin, 1844. 9. An unreasonable neglect or delay to enter a disclaimer not only deprives the patentee of costs, but also of the right of action. Brooks et al. v. Jenkins et al., 3 McLean, 433.— McLean, 1844. 10. Section 14, of the act of July 4th, 1836, empowered the court to treble the damages. A disclaimer was filed after suit was brought. This was held not to interfere with the power of the court to increase damages. O^iyon v. Serrel et al., 1 Blatch. 245.— Nelson, 1847. 11. Where a disclaimer imports upon its face that the maker owns the whole patent, his in- terest is sufficiently stated. Foote v. Silsby et al., 1 Blatch. 445.— Nelson, 1849. 13. If a disclaimer is entered at the Patent Office before a suit is instituted plaintiff recovers costs, but not if made during the progress of the suit. Ball V. Wiles, 2 Blatch. 197.— Nelson, 1851. 13. Where parts are non-essential and not in- troduced into the patent through wilful default or intent to defraud or mislead the public, the want of a disclaimer in regard to them affords no ground for invalidating the patent.— J6. DISCLAIMER. 259 14. A properly filed disclaimer is proper mat- ter to be submitted to a jury. Silsby et al. v. Foote, 14 Howard, 218.— Sup. Ct. 1852. 15. A defendant may offer in evidence a dis- claimer of the patent in suit, not to be used as a disclaimer, but as a confession prejudicing tlie rights of the complainants.— J6. 16. " The law which requires and permits him (the patentee) to disclaim is not penal, but reme- dial. It is intended for the protection of the patentee as well as of the public, and ought not, therefore, to receive a construction that would restrict its operation within narrower limits than its words fairly import." O'Beilly et al. v. Morse et al., 15 Howard, 62. —Sup. Ct. 1853. 17. Whether a patent is illegal in part, and claims more than is sufficiently described and more than was invented, the patentee must in either case disclaim in order to save the portion to which he is entitled, and he is allowed to do so when the error was committed by mistake. —lb. 18. Where a claim has received the sanction of the Patent Oifice and been held valid by the Circuit Court, the patentee is entitled to have a judgment of the Supreme Court on it before his delay to file a disclaimer becomes unreasonable. -/*. 19. " If a patentee makes a claim which is not well founded, in the same patent with other claims which are well founded, he may disclaim within a reasonable time that -which he has no right to claim, and then his patent will be good as to the residue — as good as if it had originally issued only for the claims which are valid. If he omits to make a disclaimer, but brings suit for the violation of his patent, and it satisfactorily ap- pears upon the trial that he is entitled to be pro- tected in a portion of the claims set up in his patent, but that he is not entitled to be protected in respect to another portion, he is still entitled to damages for the violation of the valid portion of his claims, the same as if all the claims were valid, so far as regards the mere right of recov- ery ; but he gets no costs. That is the law. It has this qualification : If the jury are satisfied that there has been unreasonable negligence and delay on the part of the patentee in making a disclaimer as respects the invalid part of his pat- ent, then the whole patent is inoperative, and the verdict must be for the defendants, " MeCormich V. Seymour et al., 3 Blatch. 209.— Nelson, 1854. 20. Where a patentee neglects to file a needed disclaimer during both the original and extend- ed terms of his patent, he unreasonably delays, and cannot prevail in an infringement suit. WiTiana v. New York & Ei-ie M- S. Co. , 1 Fish. P. C. 213.— Hall, 1856. 21. In the course of a trial at law, a question arose upon the true construction of a claim of the patent in suit, which was one of the issues in controversy. The Circuit Court found the claim valid, and gave the plaintiffs costs ; the Su- preme Court found the claim invalid, and refused the plaintiffs costs because no disclaimer had been filed. Seymour et al. v. MeOormiek, 19 Howard, 96.— Sup. Ct. 1856. 22. Where a claim of a patent has been sus- tained by the Circuit Court but found invalid by the Supreme Court, the patentee is entitled to wait for this finding of the Supreme Court be- fore filing a disclaimer, without being charged with unreasonable delay. — lb. 23. Although the Circuit Court may find against the validity of a claim in a patent which has a plural number of claims, the patent owner may wait until the Supreme Court passes on that question before filing a disclaimer without the delay becoming unreasonable. Silsby et al. v. Foote, 20 Howard, 378.— Sup. Ct. 1857. 24. The claim of the patent in suit was : ' ' What I claim as my invention, and desire to secure by letters-patent, is the application of the expansive and contracting power of a metallic rod, by different degrees of heat, to open and close a damper which governs the admission of air into a stove or other structure in which it may be used, by which a qjore perfect control over the heat is obtained than can be by a damper in the flue. ' ' A disclaimer, as follows, was fi; ed : ' ' Your petitioner, therefore, hereby enters his disclaimer to so much of said claim a/^ extends the application of the expansive and contracting power of a metallic rod, by different degrees of heat, to any other use or purpose than that of regulating the heat of a stove, in which such rod shall be acted upon directly by the heat of the stove or the fire which .it contains ; which dis- claimer is to operate to the extent of the interest of said letters-patent vested in your petitioner, who has paid ten dollars into the Treasury of the United States, agreeably to the requirements of the act of Congress in that case made and provided." It seems that such a disclaimer is a proper disclaimer. — lb. 25. "A party may take out a patent for three or four claims, and ... if he acts in perfect good faith, if he 'believes himself to be the in- ventor, and inadvertently, by accident or mis- take, without any wilful intent to defraud, he embraces in his <;laim more than he is entitled to— in other words, claims things which are not new, it does not render his patent void .: he is 260 DISCLAIMER. enabled to bring his suit under Sections 7 and 9 of the statute of 1837, without first making any disclaimer. His patent is good for what is new and original." Siiiger et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 26. What constitutes unreasonable delay in filing a disclaimer " is a question to be settled by the court, and not for the jury. ' '—lb. 37. With reference to delay in filing a dis- claimer, " the time, in reference to the question of delay, commences when the knowledge was brought home to the party that he was not the first inventor, or when it is declared by a court of competent jurisdiction to settle the question that he was not the first inventor ; then it is that the time commences to run, and not until then." —n. 28. If, during a trial, it appear that a claim is void for lack of novelty, and no disclaimer has been filed, plaintiffs are thereby deprived of costs. — It. 29. " Inadvertence and error may occur as well in the disclaimer as in the claim, and . . . whenever the mistake occurs it may be cured by reissue. ' ' Poppenheusen v. Falke et al. , 4 Blatch. 493.— Shipman, 1861. 80. Even a statement, in an original patent, that a part is old, or a disclaimer of a part, does not, it seems, necessarily prevent such part from being claimed in a reissued patent, though it would have that effect if made advisedly and not by inadvertence, accident, or mistake. Ehissey v. Bradley et al., 5 Blatch. 134. — Hall, 1863. 31. The defence of unreasonable neglect or delay in filing a disclaimer must be specifically set up in defendants' pleading. Burden v. Oorn- inget al., 2 Fish. P. C. 477.— Hall, 1864. 32. " Where a patent coiitains several claims, and the invention covered by one of them is not new or is absolutely void, the patentee Inay maintain an action for the infringement of the patent so far as it regards the valid claims, al- though he did not make a record of disclaimer of the invalid or void claim before the com- mencement of the action." Carhart et al. v. Austin, 2 Clifford, 528.— Olifpoed, 1865. 33. Where the terms of a patent are too broad, but the difficulty is curable by disclaimer, ' ' there may ... be a decree for a perpetual injunc- tion, each party to pay his own costs, without any actual previous disclaimer of record in the Patent Office." Accounting will not, however, be ordered until disclaimer is filed.— iJ. 34. The claim in a patent was : " ' The form- ing of packing for pistons or stuffing-boxes of steam-engines, and for like purposes, out of saturated canvas, so cut as that the thread or warp shall run in a diagonal direction from the line or centre of the roll of packing, and rolled into form, either in connection with the india- rubber core or other elastic material, or without, as herein set forth.' " A disclaimer was filed, " ' to that part of the claim which covers the packing therein described without a core, there- by causing the claim to include only the pack- ing formed out of saturated canvas, so cut as that the thread or warp shall run in a diagonal direction from the line or centre of the roll of packing, and rolled into form in connection with and around an india-rubber core or one of other elastic material, meaning the said claim to include only the combination of an elastic core with saturated canvas having threads run- ning in a diagonal direction, as described in said patent, wound around the same.' " Defendant contended that such a disclaimer could not take effect on a single claim. The court held it a good disclaimer. Tuck v. BramMU, 6 Blatch. 95. — Blatohpord, 1868. 35. In the absence of unreasonable neglect or delay, a disclaimer may be filed during the pendency of a case, and the case proceed. — lb. 36. Disclaimer during suit takes away the right to costs. — lb. 37. A claim in complainants' patent was : " ' 1. The employment or use of the defiecting plates E, E', one or both, placed at the sides of the saw, as herein shown, for the purpose of preventing the sawed stuff from bearing against the sides of the saw and expanding the saw kerf, and also for the purpose of allowing a thin veneer-saw to bo stiffened by plates D, one or, two, as desired.' " Subsequently to the grant of the patent certain owners under the patent entered their disclaimer ' ' to that part of the first claim of the patent ' which covers the employ- ment or use of the deflecting plate E ' (the de- flecting plate on the same side of the saw with the stiffening plate), ' at the side of the saw, thereby causing the said claim to include only the combination of the saw described with both of the deflecting plates E and E', when both of said deflecting plates are used at one and the same time, in the manner and for the purpose described in said patent.'" Thereof the court said : " The disclaimer of the use of only one deflecting plate with the saw, and the limitation thereby of the first claim to the use of two de- flecting plates with the saw, was proper, and the disclaimer was in proper form." Myers et al. V. Frame e« aJ. , 8 Blatch. 446.— Blatchpokd, 1871. 38. Where, pending a trial, the necessity for DISCLAIMEE. 361 a disclaimer appears, decree will not be made until disclaimer is filed. — lb. 39. A claim in complainant's patent was : " ' The use and application of glue, or glue com- position in the tubing, substantially as described, for the purpose of making the flexible tubing gas-tight, whether of cloth, or rubber, or other gum.'" Pending trial, a disclaimer was filed to that part of the claim of the patent " ' which claims, as an improvement in flexible tubing for illuminating gas, the use and application of glue, thereby limiting the claim to the use and appli- cation of glue composition in the tubing, sub- stantially as described, for the purpose of mak- ing the flexible tubing gas-tight, whether of cloth, rubber, or other gum. ' ' ' This was held to be a proper disclaimer. Taylor v. Archer et al., 8 Blatch. 315. — Blatchford, 1871. 40. "The mere fact that the plaintiffs have, since the trial and verdict, disclaimed one or more of the claims made in the patent, is not alone conclusive that the plaintiffs are not enti- tled to costs. If the verdict was rendered . upon all the claims, affirming their validity and the novelty of the invention claimed in each, then what the plaintiffs may have said or done, by disclaimer or otherwise, does not deprive them of the effect of the verdict ; and so long as it re- mains in force, not set aside, it is conclusive be- tween the parties. The fact of disclaimer is high evidence, in such case, that the verdict was wrong, and that the plaintiffs should only have recovered on the parts of the invention or patent therefor which are not disclaimed, and such evi- dence might warrant a new trial. But while such a verdict stands it is conclusive. ' ' Peck et al. V. Frame et al., 5 Fish. P. C. 211. — Wood- ruff, 1871. 41. "A disclaimer is necessary only where the thing claimed without right is a material and substantial part of the machine invented. ' ' — JS. 42. The patent in suit was for an elastic woven fabric specially adapted for forming gores for gaiter boots, and a claim thereof was ' ' the cord- ed fabric, substantially as hereinbefore described, in which the cords are elastic and held between the upper and under weft threads, and separated from each other by the interweaving of the up- per and under weft threads with the warp threads in the spaces between the cords, and only there, substantially as above shown." A disclaimer was filed of " any fabric in which the weft threads are so interwoven with the warp threads that the former are not brought half way around each of said cords, so as to grip them in such a way as not to permit said elastic cords to slip between said weft threads in case said cords are cut crosswise or bias." It seems that such a disclaimer is a proper disclaimer. Smith v. NicJwls, 31 Wallace, 112.— Sup. Ct. 1874, 43. A disclaimer may be filed after suit brought as well as before ; the suit does not fall thereby. —lb. 44. Where, of different claims in suit, a part are void and no disclaimer has been filed, costs cannot be recovered. Bussey et al. v. Wager et al., 2 Banning & Arden, 229. — Wallace, 1876. 45. ' ' The disclaimer, when recorded, becomes a part of the original specification, and must be taken into account when construing the patent, and in ascertaining the rights of the parties to the suit, unless it appears that the effect of the disclaimer is to enlarge the nature of the inven- tion and prejudice the rights of the respond- ents." Dunbar et al. v. Myers et al., 94 U. S. 187.— Sup. Ct. 1876. 46. In a pending suit, ' ' where the effect of the disclaimer is to diminish the claims of the pat- ent, without prejudicing the rights of the re- spondent, the suit may proceed, notwithstanding the disclaimer, it being held that the disclaimer under such circumstances does not affect the pending suit, except to limit and qualify the claims of the patent, and in respect to the ques- tion of unreasonable neglect or delay in filing the same. ' ' — lb. 47. " Matters properly disclaimed cease to be part of the invention, and it follows that (he con- struction of the patent must be the same as it would be if such matters had never been includ- ed in the description of the invention or the claims of the specification." — lb. 48. For an example of a United States patent held to be affected by disclaimer contained in a foreign patent to the same inventor, see — . Aslicroft V. Boston & Lowell Railroad Co., 97 U. S. 189.— Sup. Ct. 1877. 49. As a condition of the extension of a patent, the Commissioner of Patents required a certain disclaimer, and it was made. Defendant con- tended that this was conclusive upon complain- ant. The court held otherwise. Union Metal- lic Cartridge Co. v. JJ. 8. Cartridge Co., 2 Ban- ' ning & Arden, 593.— Shepley, 1877. 50. It seems that, although an original patent may contain a disclaimer, yet the reissue thereof, omitting the disclaimer and covering the dis- claimed matter, may be had. American Shoe Tip Co. V. National 8hoe-Toe Protectm- Co., 2 Banning & Arden, 551.— Nixon, 1877. 51. It seems that a disclaimer may properly be filed, erasing from the specification of a pat- ent an alternative mode of applying the patent- 262 DISCLAIMBK. ed improvement. ScMlliriger v. Ounther, 14 Blatch. 153.— Shipman, 1877. 53. Where a disclaimer in a patent lias refer- ence to a prior patent, that disclaimer is to be read in the light of the construction belonging to such prior patent. Woman v. Peterson et al., 3 Banning & Arden, 249.— Shbplbt, 1878. 53. Where a patent has been gi-anted under conditions of deliberate consideration, the paten- tee is warranted in refusing to disclaim until a court has passed upon the question of validity. Burdett\. Estey et al., 15 Blatch. 349.— Blatch- FOBD, 1878. 54. The correction of a mistake in the state- ment of a patent as to the effect of laying pave- ment in sections is the office of a reissue, and not of a disclaimer. SchilUnger v. Ounther, 15 Blatch. 303.— Blatchfokd, 1878. 55. It is proper to correct by disclaimer an un- lawful claim introduced by reissue. SchilUnger V. Ounther, 17 Blatch. 66.— Blatchfokd, 1879. 56. "It is true that strictly Section 4917 con- templates only a disclaimer of some claim, or a part of a claim ; it is not improper to eliminate or withdraw, by the same writing, the parts of the body of the specification on which the dis- claimed claim, or part of a claim, is founded. The disclaimer is none the less disclaimer of a claim or a part of a claim because, in addition, it disclaims such parts of the body of the speci- fication. The disclaimer being a proper one, in form and substance, it is, by the statute, to be, after its filing, ' considered as a part of the orig- inal specification. ' The . . specification is to be thereafter read as if the disclaimer were incor- porated in it." — lb. 57. " No disclaimer can be allowed to be op- erative unless the unlawful claim was made through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention ; nor can a plaintiff recover on a patent which claims anything not bona fide the patentee's, un- less the claim to the thing not bona fide was made through inadvertence, accident, or mistake, and without any wilful default or intent to defraud or mislead the public."— 7d. 58. A disclaimer disclaimed " combining a dead-beat and recoil escapement, except when the same is produced from flattened metal by bending it into the shape and for the purpose, substantially as described in the specification of ^aid patent. " It seems that such a disclaimer is proper. Terry GlocJc Co. v. Mw Haven Gloek Co., 4 Banning & Arden, 121.— Shipman, 1879. 59. By the court : " As the plaintiff filed his disclaimer after suit brought, he would not or- dinarily be entitled to 8,ny costs in the suit (rev. Stat. TJ. S., Section 4:922). But in this case the disclaimer was not necessary to sustain the patent to the extent it is held valid, was in- operative, in the view taken of it, upon the pat- ent, and has had no effect in maintaining the suit. Under the circumstances it does not come within the provision of the statute denying costs." Sharp v. Tifft, 18 Blatch. 132.— Whbblek, 1880. 60. A disclaimer in the body of a patent may embody an error in fact as to the prior art, which error makes against complainant ; but " the courts have no right to disregard such a disclaimer." Collins Co. v. L. Coes et al., 3 Fed. Rep. 225.— Lowell, 1880. 61. Where interest on defendants' profits is allowable, -it does not begin to run till after dis- claimer filed, in that case where a disclaimer is necessary. Burdett v. Msteff et al., 19 Blatch. 1. —Wheeler, 1880. 62. " The provision is not that no costs shall be recovered until after disclaimer, but it is as extensive as the whole existence of the case, and prohibits the recovery of any costs at all in the case. "— JS. 63. Complainant, the patentee, filed a dis- claimer to his patent based upon a mistake, the mistake being that an article which he chanced to see was supposed by him to antedate his in- vention, the fact being that said article was really made by himself. The disclaimer was, however, given its full force by the court. Boot v. M. M. Welch M'fg Co., 17 Blatch. 478.— SmpiLor, 1880. 64. By the court : "It is explicitly stated in the specification that both the processes which the plaintiff has united in a single process are old ; and this must mean old at the date of his invention. He cannot now be heard to contra- dict this admission." Moffitt v. Sogers et al., 8 Fed. Rep. 147.— Lowell, 1881. 65. When, on a trial, a claim, among those sued on, is found invalid and the other or others infringed, a disclaimer of the invalid claim must be made before injunction and account will be ordered. Aticater M'fg Co. et al. v. Beecher M'fg Co., 8 Fed. Rep. 608.— Shipman, 1881. 66. By the court : " This patentee had no right, after having stated positively to the world and to the Patent Office that he did not claim the idea of mounting the rake-head upon the top of the carriage by a reissue, to claim this as an invention by himself. ' ' Bdgarton et al. v. Furst & Bradley M'fg Co. et al, 10 Bissell, 402.— Blodgett, 1881. 67. From the statement of the case : " WhUe the causes were pending in the court below, and DISCLAIMEE. 363 after the testimony in chief of the defendants had been taken, to wit, on October 36th, 1880, the patentee and the complainants filed in the Patent Office a disclaimer, disclaiming the word ' preferably ' where inserted in the specification of the reissued patent, and also any process de- scribed and claimed by which meat is to be com- pressed into the packages in any other than a warm or heated condition. On the same day the patentee and complainants filed another dis- claimer, whereby they disclaimed any interpre- tation or legal construction of the words of the specification of the reissued patent, broader tlian is conveyed by the words ' the meat is first cooked thoroughly by boiling it in water, so that all the bone and gristle can be removed and the meat yet retain its natural grain and integrity.' The efEect of this disclaimer was to restore the claims of the reissued patent to what they were in the original patent, except that the claim of the original patent is limited by the second dis- claimer to the packing of meat cooked by boil- ing." Wilson Packing Co. v. Ghicago Packing & Promsion Co. etal., 105 U. S. 556.— Stjp. Ct. 1882. 68. When an original patent was applied for, a rejection was unlawfully declared, based upon a prior rejected application, and applicant dis- claimed what was shown in such rejected appli- cation. He subsequently (four years afterward) reissued, omitting the disclaimer, and corre- spondingly broadening the claim. Beissue held unlawful. Putnam v. Sutchinson, 11 Bissell, 233.— Blodgbtt, 1882. 69. " One claim in a reissue may be void with- out necessarily invalidating the other claims. In such case it is proper to disclaim the void claim." Tyler v. Galloway et al., 20 Blatoh. 445.— Shipmau, 1883. 70. Where, on trial, a disclaimer is found nec^ essary, it must be filed before interlocutory decree will issue. Mathews v. Spanieling et al., 20 Blatch. 483.— Wheeler, 1882. 71. Where a prior structure virtually antici- pates a patented structure, a disclaimer of the prior structure will not save the patent. Coburn V. Schroeder et al, 22 O. G. 1538.— Whbelek, 1883. 73. Where a disclaimer is made necessary by the court's opinion, it must be filed before in- junction and account will be ordered. — lb. 73. Complainants' patent was for " arrang- ing a perforated fire-pot, with a grate bottom, within a circular stove, having provision for the admission of air below the point of suspension of said fire-pot, substantially as described." Complainants disclaimed " so much of the claim as covers perforations or openings in the sides of the suspended fire-pot extending throughout the entire depth of its sides, and they limit such perforations or openings to substan- tially the lower half of the fire-pot ;" and they stated that they claimed " a fire-pot suspended from its uiDper edge, with substantially the lower half of its sides containing perforations or open- ings. ' ' The court held that this was not a genu- ine disclaimer, but an attempt to efEect what could only be effected by a reissue. Hailes et al. v. Albany Stove Co., 31 Blatch. 371.— Wallace, 1883. 74. By the court : " If the defendants have infringed the second or old claim, the plaintiffs, upon filing a disclaimer of the new one, are en- titled to a decree with costs for the infringement of the old and valid claim ; considering that the question of the validity of the new claim in the reissue is a question of law upon the face of the patent, and that its validity has been sanctioned by the Commissioner of Patents in granting a reissue and upheld by the Circuit Court, there has been no unreasonable delay in entering a dis- claimer, for the plaintiffs were not bound to dis- claim until after the judgment of this court upon the question." Oageet al v. Herring etal, 107 U. S. 640.— StJP. Ct. 1883. 75. Where, in an action at law, a disclaimer which ought to be made is not made before the suit is brought, complainant cannot have costs. Proctor V. Brill et al, 16 Fed. Rep. 791.— Mc- Kennan and Butler, 1883. 76. A disclaimer can add nothing to a patent. It has no office to make the patent cover any- thing, however clearly shown in the patent, which is not described and claimed as a part of the invention. And where the disclaimer struck out the word " broadly," and also the words " in any suitable manner as" in the description, and also the word " are" in the claim, the court said that these changes made the description and the claim cover, as a part of the globe holder, " the disk as a centre, with the arms riveted to it." Also that "the efEect of the disclaimer is to change the invention covered by the patent fronx the arms to the centre. . . . Such changes per- tain to reissues and not disclaimers." White v. E. P. Oleason M'f'g Co., 21 Blatch. 364.— Wheeler, 1883. 77. A United States patent canjiot be afCected by a disclaimer found in an English patent to the same inventor, nor by the claims found in a later American patent to the same inventor. . United Niolcel Co. v. MelcMox, 17 Fed. Rep. 340. — Blodgbtt, 1883. 78. It is not a good objection to the grant of 264 DISCLAIMEE. a preliminary injunction that a disclaimer was not filed, as respects claims not in issue, before suit was brought. Buffet al. v. Calkins, 25 O. G. 601.— AcHBSON, 1883. 79. Where a complainant abandons a claim in his reissued patent in suit because of its inva- lidity through undue expansion, and there is no hearing upon that claim, a disclaimer is not nec- essary before a decree, nor are costs to be denied. Mundy v. Lidgerwood Mfg Go., 20>Fed. Rep. 191.— Whbblek, 1884. 80. " It is settled that a disclaimer need not be filed until the court has passed upon the con- tested claims." Stutz v. Armstrong & Son, 28 O. G. 367.— AcHBSON, 1884. 81. The claim in a patent was : " 3. In an electric lamp, the combination of the core or armature C and the clamp D, by means of which the carbon points are separated from each other as soon as an electrical current is established!, and held asunder during the continuance of the cur- rent, and then permitted to come together as soon as the current ceases, substantially as and for the purpose specified." A disclaimer was to : " So much of such part of the invention de- scribed in said letters-patent, and coming within the general language of the third claim thereof, as may cover or include as elements thereof ' the core or armature C ' and ' the clamp D,' except- ing when the core or armature raises the clamp by a lifter secured to such core or armature, sub- stantially as described in said patent." The court thereupon said : " The effect of the dis- claimer is to disclaim Figure 6 from the patent, and to retain Figure 1, which was clearly de- scribed, and all whose mechanical features were pointed out, although the distinctive principle of the invention was neither known nor stated. The object of the disclaimer was to limit the patent to clamp D of Figure 1, with the elements necessarily connected therewith already specified in combination therewith." Brush et al v. Oon- dit et al., 23 Blatch. 246.— Shipman, 1884. 82. ' ' The defence of unreasonable neglect or delay in filing a disclaimer must be set up in the answer before it can be considered by the court. ' ' Warden et al. v. Searls, 21 Fed. Rep. 406. — Nixon, 1884. 83. The construction of a claim which will render a disclaimer altogether nugatory, must be essentially wrong, and cannot therefore be ac- cepted. Atlantic Grant Powder Co. v. Hulings, 31 Fed. Rep. 519.— Acheson, 1884. 84. "A disclaimer can be made only when something has been claimed of which the pat- entee was not the original or first inventor, and when it is intended to limit the claim in respect to the thing so not originally or first'invented. It is true that in so disclaiming or limiting a claim, descriptive matter, on which the dis- claimed claim is based, may, as incidental, be erased in aid of, or as ancillary to the disclaim- er." Union Metallic Cartridge Co. v. U. 8. Cartridge Co., 112 U. S. 634. -Sup. Ct. 1884. 85. " After an extension has been obtained on the condition precedent of making . . . dis- claimer, the disclaimer cannot be held inopera- tive as respects the extended term." — lb. 86. A disclaimer is operative as to recoveries both before and after it Is filed. — lb. 87. Complainant joined in one patent different improvements applicable to trunks, and the court, before permitting a decree in complain- ant's favor, compelled complainant to file a dis- claimer to some of the claims of the patent, on the ground that the different improvements could not be properly joined in one patent. Sessions V. Bomadka et al., 21 Fed. Rep. 124. — Dybk, 1884. 88. "After the term of a patent has expired it is too late to file a disclaimer." Vacuum Oil Go. V. Buffalo Lubricating Oil Co., 31 O. G. 918. —Wallace, 1885. , 89. It seems that there is no objection to be urged against reissuing a patent and narrowing the claim as compared with the original. Until the decision of the Supreme Court has made the necessity of a disclaimer clear, there is no legal obligation on the patentee to disclaim. Mat- tliews et al. v. Flower et al., 33 O. G. 887.— Bkown, 1885. 90. The claims in a patent were : "1. As a new article of manufacture, glassware composed of homogeneous stock comprising different colors blended into each other, substantially as de- scribed. 3. That improvement in the art of manufacturing articles of glass of homogeneous stock, and producing therein different colors, which consists in cooling the article and reheat- ing parts of the same unequally, thereby produc- ing the variations in color as stated. ' ' The pat- ent owner filed a disclaimer in which he limited his claim to a " gold ruby compound." It was held, that " this was a patent where a part could be properly disclaimed. It did not require the importation of anything new into the specifica- tion, but simply an elimination of a part of what was originally claimed." Libby v. Mt. Wash- ington Glass Co. et al., 26 Fed. Rep. 757.— Colt, 1885. 91. Pending suit on a patent, a disclaimer was filed, and motion for provisional injunction made. Defendants contended that a supplement- al bill should have been filed and another motion DRAWING. 365 for provisional injunction made. The court sustained complainant's mode of procedure. — Ih. 93. It turned out on the trial of a cause that a disclaimer should have been filed to one claim of the patent in issue. Before the case was tried in the Supreme Court the patent expired. The Supreme Court held : " That the decree below • must be reversed as to the award of costs, and affirmed in all other respects, with interest until paid, at the same rate per annum that decrees bear in the courts of the State of New York, and the case be remanded to the Circuit Court with a direction to modify the decree accordingly. Each party will bear his own costs in this court, and one half of the expense of printing the rec- ord." YalB Lock M 'fg Co. v. Sargent, 117 U. S. S37.— Sup. Ct. 1886. 93. Where the validity of a claim has been called in question and doubted, but has never been judged invalid by a competent tribunal, nor acknowledged to be invaUd by the owner, the state of facts is not such as to compel a dis- claimer. Hill V. BidMe etal., 27 Fed. Rep. 560. —Butler, 1886. 94. In a patent for a glass annealing furnace, the specification contained a disclaimer as fol- lows : " I am aware that movable bars and fixed temporary rests for the glass have long been in public use to move sheets of glass through an an- neahng tunnel. Therefore I do not claim these. ' ' It appeared from the contents of the file wrap- per that this disclaimer had been made in view of a prior British patent, and the disclaimer was construed in the light of that prior British pat- ent. Tondeur v. Stewart et al., 38 Fed. Rep. 561.— AcHBSON, 1886. 95. In a suit for an infringement of a patent, decision was rendered just before the patent ex- pired, finding one claim invalid and another in- fringed. The patent expired within a day. De- fendant moved to dismiss the bill because a dis- claimer had not been filed. The court refused the motion. Kittle v. Hall etal., 30 Fed. Rep. 239.— Wheblbk, 1887. 96. In a patent for a cash and parcel railway for stores, the claim was : " The combination of counters, desk, ways, and carriers, and appli- ances whereby each carrier is automatically driven along its way from the counter to the desk, and from the desk back to said counter, substantially as set forth." A disclaimer was filed limiting the scope of this claim : " To a combination of counters, desk, ways, and car- riers, and appliances whereby the carriers are all automatically driven along one way, each from its counter to the desk, and automatically ar- rested there, and all along another way from the desk back to the counters from which they were sent, and each only automatically arrested at the counter from which it was sent, substantially as set forth in the descriptive part of the specifica- tion of the patent." It was urged by the de- fence that one cannot by a disclaimer incorporate another element, namely, graduated stops, into his claim. The court said: "There is much force in this reasoning," but did not pass upon the question. Lamson Cash Railway Co. v. Mar- tin et al., 30 Fed. Rep. 834.— Colt, 1887. 97. Where objectionable features have been taken into a patent through reissue, it is proper to eliminate' them by disclaimer. Torrant- v. Duluth Lumber Co., 30 Fed. Rep. 830.— Nel- son, 1887. 98. Green's driven well patent contained the following : " I am aware that James Suggett's patent of March 29th, 1864, and I disclaim all that was secured to him therein." This was eliminated in the reissue, and the reissue was sus- tained. Barnes v. Andrews et al., 133 U. S. 40. —Sup. Ct. 1887. DOUBLE USE. [Comprised under " Invention — Insufficiency of."] DRAWING. Cases. 1. " The drawing may be referred to for the purpose of aiding the specification, which would otherwise be imperfect." Burrall v. Jewett, 3 Paige, 134.— Walwobth, 1830. 3. The specification, the patent, tiie drawing, and tlie model, are all to be taken as parts of the description. Whiting et al. v. Emmett et al., I Bald. 303. — HoPKiNSON and Baldwin, 1831. 3. " The drawings are to be treated as part of the written specification, and may be referred to to show the nature and character and extent of the claim, as well as to compose a part of the description. " Washlmm et al. v. Could, 3 Story, 122.— Stort, 1844. 4. The drawings of the patent need not nec- essarily be referred to in the specification. Em- erson V. Hogg et al., 3 Blatch. 1.— Betts, 1845. 5. The court may look to the whole specifica- tion, and also to the drawings, for the explanation of anything obscure. Hogg et al. v. Emerson, II Howard, 587.— Sup. Ct. 1850. 6. " Section 6 of the act of 1837, that 'the applicant shall be held to furhish duplicate 266 EMPLOYER AND EMPLOY^. drawings,' though directory in its terms, is not a condition." French et al. v. Sogers etal., 1 Fish. P. C. 133. -Kane, 1851. 7. "The drawings are a part of the descrip- tion of the thing patented, and are to be consid- ered in connection with the specification. ' ' Foss et al. V. Herbert, 1 Bissell, 131. — Dbummond, 1856. 8. Drawings are to be considered part and parcel of the specification. Judson v. Moore et al., 1 Bond, 385.— Leavitt, 1860. 9. "It is not necessary, in order to make a patent valid, that the patentee should so make the drawings in his patent that they could be used for' working drawings, or that a machine made in accordance with the exact scale of the drawings, which accompany the patent in the PatentOfiice, . . . should be an operative ma- chine." Am. S. & L. 8. <& D. M. Co. v. Am. T. &M. Co. et aX., 1 Holmes, 503.— Sheplet, 1870. 10. "It is necessary . . . that the patentee should so describe his invention that a mechanic skilled in the art to which that invention relates would be able, by the aid of the description and drawings of the patent, to embody that invention in a practical, operative, efficient, and effectual form. That is all that is necessary, and, there- fore, if, . . . upon a critical examination of these drawings, . . . there are some slight differences in distance or in proportion, which, if exactly carried out upon the same scale, in a machine constructed according to the patent, would require modification in order to make the machine operative, that does not affect the ques- tion." — lb. 11. " The drawings are no doubt a part of the description of the thing patented, but they must be considered in connection with the specifica- tions. Where the invention patented consists ... of a combination of old elements to pro- duce a new result, mere matters of adjustment of the individual elements are not limited or controlled by the drawings, unless : 1. They are expressly so limited by the specifications as well ; or, 3. Such limitation and control are nec- essary to maintain the integrity of the specifica- tions, taken as a whole, or of some essential part or parts thereof ; or, 3. Such limitation and con- trol are essential to produce the result claimed." Hamilton v. Iws et al., 6 Fish. P. 0. 344. — LONGYEAK, 1873. 13. " The drawing could and should be looked at, if necessary, in order to explain an ambigu- ous or doubtful specification, and to make the invention capable of being understood and used. But it cannot supply an entire want of any part of a specification or claim in a suit upon a patent, al- though it might afford ground for a reissue cov- ering the part shown by it. " Tinker v. Wilber's E. M. & B. M'fg Co., 1 Fed. Rep. 138.— Wheeleb, 1880. 13. A change in the drawings — in a reissued patent — not warranted by the model or the orig- inal drawings, though " morally objectionable," is not illegal unless such change affect the claim. Pearl et al. v. Appleton Co. et al., 3 Fed. Rep. 153.— Lowell, 1880. 14. By the court : " To understand these pat- ents it is necessary to examine the drawings in connection with, and as a part of, the specifica- tion, and to rely upon them alone, to some ex- tent, to ascertain the exact form and position of some of the parts." Banker v. Bostwick et al., 3 Fed. Rep. 517.— Wheeler, 1880. 15. The model accompanying the application for patent being destroyed, a court will not per- mit amendment of the patent drawing except upon very clear evidence of mistake. Boi/er v. Russell & Co., 9 Fed. Rep 696.— Walker, 1881. 16. In the drawings of a patent on a grain sepa- rator, the deflector was shown so near the shaker that it could not operate if so made in practice. The court held the device to be " inoperative and without value. " — lb. EMPLOYER AND EMPLOY^. Cases. 1. Where an inventor, while working for an- other, developed an invention at the expense of such other, and allowed such other freely to use it, this state of facts was held to constitute a li- cense to use the invention during the life of the patent. McClurg et al. v. Kingland et al., 1 Howard, 203.— Sup. Ct. 1843. ■ 3. If a person employed in the manufactory of another, and while receiving wages, makes ex- periments at the expense of his employer, con- structs the article invented, and permits his em- ployer to use it, no compensation for the use be- ing paid or demanded, and then obtains a patent, these facts would justify the presumption of a license to use the invention. Slemmers' Appeal, 58 Pa. St. 155. -Sherwood, 1858. 3. A man stipulated to engage in the service of a company and devote himself to making im- provements in paper-folding machines, and that all improvements and inventions made or dis- covered by him should be the property of the company, and that he would take all proper steps for the purpose of procuring patents for EMPLOYER AND EMPLOYE. 267 such improvements. During this employment this man made a new machine, but it was aban- doned as an unsuccessful experiment. After this employment ceased, the man made a ma- chine for the like purpose, which was successful, and took a patent therefor. This patent was held not to be the property of the company. Appleton V. Baoon et al., 3 Black, 699. — Sup. Ct. 1863. 4. " Where a person has discovered an im- proved principle in a machine, manufacture, or composition of matter, and employs other per- sons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discov- eries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of him who discovered the improved principle, and may be embodied in his patent as a part of his invention. Suggestions from another, made during the progress of such experiments, in order that they may be sufiBcient to defeat a patent subsequently issued, must have embraced the plan of the improvement, and must have fur- nished such information to the person to whom the communication was made, that it would have enabled an ordinary mechanic, without the ex- ercise of any ingenuity and special skill on his part, to construct and put the improvement in successful operation. Persons employed, as much as employers, are entitled to their own in- dependent inventions ; but where the employer has conceived the plan of an invention, and is engaged in experiments to perfect it, no sugges- tions from an employe, not amounting to a new method of arrangement, which, in itself, is a complete invention, is sufficient to deprive the employer of the exclusive property in the per- fected improvement. But where the sugges- tions go to make up a complete and perfected machine, embracing the substance of all that is embodied in the patent subsequently issued to the party to whom the suggestions were made, the patent is invalid, because the real invention or discovery belonged to another." Agawam Go. V. Jm-dan, 7 Wall. 583.— Sup. Ct. 1868. 5. The patent in question was for sewing-ma- chines. Complainant had worked for the de- fendant corporation, experimented with its tools, stock, and materials, and thereby produced the improvement in question. In defendant's fac- tory he had made five thousand sewing-ma- chines on contract, having the improvement, his special tools going to the corporation at the end of the contract. It was held that this state of facts created a license to the defendant corpora- tion. Chabot V. Am. Buttonhole & Overseaming Co., 6 Fish. P. C. 71.— McKbnnan, 1873. 6. " Persons employed as much as employers, are entitled to their own independent inventions. " Union Paper Collar Go. v. Van Deusen et al., 33 Wall. 530.— Sup. Ct. 1874. 7. In the absence of a specific contract to that eilect, the employer is not entitled to the pat- ented inventions of the employe. Oreen v. Wil- lard Improved Barrel Co., 1 Mo. App. 303. — Bakbwbll, 1876. 8. Where an inventor, working for another, puts the invention into use in the factory of that other before patent granted, he gives that other a special license to continue such use after patent granted. Magounv. New England Glass Co., 8 Banning & Arden, 114. — Shbplbt, 1877. 9. One Wilkins, hired one Spafford, for twenty-five hundred dollars a year, under an engagement that Wilkins was to have the ex- clusive benefit of SpafEord's services in making machinery and improvements in Wilkins's prem- ises, and that Wilkins was to have the exclusive benefit of SpafEord's inventive faculties and all such inventions as Spafford should make during the term of service. Certain inventions were made and patented while Spafford was " experi- menting;" they were made in Wilkins' shops, with his machinery, tools, and at his expense, at a cost variously estimated at from twenty-one to thirty thousand dollars. The court held that Wilkins was " entitled to an exclusive license for the use of these machines during the exist- ence of the patents, and any extensions, renewals, or reissues of the same." Wilkins v. Spafford. 8 Banning & Arden, 374.— Shepley, 1878. 10. Complainant being about to start a factory for the manufacture of dry-goods, employed one Howard as a machinist. Various trifling in- ventions made by Howard were patented by him and assigned to complainant. Two patents were issued in complainant's name for Howard's inventions, for contrivances applicable to sewing- machines generally, being for improved mechan- isms for operating such machines. It was no part of the original employment of Howard to invent machinery for general use, but only in the factory of complainant. Declarations of complainant were proved to the effect that he was to pay the expenses of obtaining the patents for one half interest in them, and was to assign the other half to Howard whenever he wanted it. It was held that Howard had an equitable title to one half of the two patents before men- tioned. Whiting v. Ora/oes et al., 3 Banning & Arden, 333.— Shepley, 1878. 11. Where an ordinary employe, not hired to 268 EQUIVALENT— CHEMICAL. invent, makes and patents an invention during his employment, at the expense of the employer, such an employer does not thereby acquire a title to the patent. If such state of facts creates a license, such a license is personal, not trans- ferable, and in case licensee were a corporation the right would die with the dissolution of the corporation. Hapgood et al. v. Hewitt, 11 Bis- sell, 184.— Grbsham, 1883. 13. By the court : " The justice or injustice of the respondent taxing the salt company if he proposes to do so, for the use of a process disclosed by experiments made at its request and expense, with its materials, while in its employ, we cannot enter upon." Damon et.al. v. East- wick, 33 O. G. 1709.— BuTLBE, 1883. 13. By the court : " If the workman, by us- ing the tools and time and money of his em- ployer, with his consent, makes an invention and applies it in his employer's business, the em- ployer may continue to use it. If the improve- ment is a process, it has been held that the in- fringer may continue to practice the process for the whole period of the patent. . . . But, if the invention pertains to a machine, it is understood that only the specitic machine or machines which have been so made are licensed." Wade v. Metealfetal., 16 Fed. Eep.. 130.— Lowell, 1883. 14. Where it appears that the complainant patentee had been in defendant's employ, and while there had put in use, for defendant's busi- ness, the patented articles for which the suit was brought, it was held that the circumstances created a license, from complainant to defend- ant, to use those identical articles so long as they should last. Barry v. Crane Bros. M'fg Co., 33 Fed. Kep. 396.— Blodgbtt, 1884. 15. The complainant and patentee had pre- viously worked for the defendant corporation. He made the invention in the time and with the tools and materials of the defendant corporation, and defendant put it in use at his desire. This state of facts was held to create a license not ter- minating with his employment. Jenks v. Lang- don Mills et al., 37 Fed. Rep. 633.— Colt, 1886. 16. A bill in equity was filed to compel the specific performance by the defendant, of certain contracts between him and the complainant, wherein defendant undertook to produce certain improved machinery to embody inventions made, without details or specification as to form, ma- terial, structure, principle, or mode of operation of the proposed machines, all of these matters being left wholly to the judgment and discretion of the defendant. Thereof the court said ; " Courts of Chancery will not entertain bills to compel the specific performance of contracts for personal services." Complainant urged that at least defendant might be required to show and exhibit to complainant the plans and drawings of said machines heretofore prepared by him, and make disclosure and discovery of the prin- ciple and structure of machines already built. The court decided in the negative on both points. ^¥ollensach v. Briggs, 37 0. G. 339.— Bailey, 1886. 17. An inventor went to work for another party for a year, agreeing "to devote all his time and energy during the said period, in su- perintending the manufacturing department of said business, as well as in the buying and sell- ing of goods belonging to said business." The inventor's duties were not otherwise specified, but the duties he had been accustomed to per- form embraced the preparation of new designs, many hundreds of which he had prepared for such party, and forsome of which he had obtained patents." During this employment he invented a patentable design and patented it, and left the employment of the company. The court held that the facts constituted a license or special privilege to the defendant to use the invention. Hermann v. Hermann, 37 O. G. 893. — Browm, 1886. 18. A corporation manufacturing ploughs and other agricultural implements, hired a superin- tendent who agreed to use his knowledge and skill in devising and making improvements in the ploughs manufactured by the corporation, and in getting up and perfecting ploughs and other agricultural implements adapted to the trade. While employed by the corporation he invent- ed and built a new sulky plough. He did this in regular working hours. The workmen upon it were paid by the corporation, and the mate- rials were purchased by the corporation. After the superintendent's connection with the cor- poration ceased he applied for and took a pat- ent on this plough. It was held that the super- intendent was not expressly required by his con- tract to exercise his inventive faculties for his employer, that whatever right the employer had to the invention was a naked license to make and sell, which right was not transferable, and was extinguished by the subsequent dissolution of the corporation. Ha/pgood et al. v. Hewitt, 37 O. G. 1347.— Sup. Ct. 1886. EQUIVALENT— CHEMICAL. Cases. 1. The inventor of a new compound may properly specify substitutes for the different in- EQUIVALENT— CHEMICAL. 369 gredients, and thereby cover their use in the compound. Ryan et al. v. Goodwin et al., 3 Sumner, 514. - Story, 1839. 3. After a chemical discovery has been made and patented, it is easy to find chemicals of dif- ferent names -which will answer the purpose of the invention, but the use thereof is an infringe- ment. Goodyea/r v. Central Railroad of New Jersey, 3 Wall. Jr., 356.— Griee, 1858. 3. " An equivalent of any substance is an- other substance having similar properties and producing substantially the same eSeot. " Mat- thews V. Skates et al., 1 Fish. P. C. 603. — Jones, 1860. 4. Complainant's patent was for " producing smooth and glossy surfaces upon the hard com- pound of caoutchouc and other vulcanized gums, by means of the use of oil or other equivalent substance applied to the surface of the prepared gum, and the plates of metal or moulds, sub- stantially as therein described." Defendants used for this purpose spirits of turpentine, with a small quantity of rubber dissolved in it. De- fendants were held to infringe. Poppenhusen V. Faulke et aX., 5 Blatch. 46.— Shipman, 1862. 5. " This term ' equivalent,' when speaking of machines, has a certain definite meaning ; but when used with regard to the chemical action of such fluids as can be discovered only by experi- ment it also means equally good." Tyler v. Bos- ton, 7 Wall. 337.— Sup. Ct. 1868. 6. " By . . . substitution of chemical equiva- lents, patents may as well be infringed as by me- chanical equivalents. When a new composition of matter or process of manufacture is invented and patented, it is easy for the chemist, with the aid of the specification in the inventor's patent, to suggest changes in the process by the substi- tution of chemical equivalents which may pro- duce similar or better results. It does not nec- essarily follow that such a use of chemical equivalents would not infringe the patent, even if in some respects they were improvements on the original process patented." Woodward v. Morrison et al., 1 Holmes, 134.— Shbplbt, 1873. 7. For the purpose of manufacturing a pre- served and innocuous bookbinders' paste, chloride of sodium and chloride of zinc are equivalents. — Ih. 8. In a composition for covering steam boil- ers and the like, asbestos and whitewash are the equivalents of lime-putty, and clay is also the equivalent of lime-putty. U. 8. & Foreign Sala- mander Felting Go. v. Merrimac M'fg Co., 3 Banning & Arden, 167.— Shbpley, 1875. 9. " Since the leading case of Crane y. Price, 1 Web. P. C. 409, it has not been considered safe to invoke the ordinary doctrine of equiva- lents in construing patents for new manufactures or compositions of matter." Rumford Gliemi- cal Works v. Becker, 3 Banning & Arden, 351. —Nixon, 1876. 10. Complainant's patent was for a marine paint composed of oxide of copper, an earthy or mineral base, and a vehicle or medium. De- fendants used in their paint sulphuret of anti- mony, an earthy or mineral matter which dis- solves in water more slowly than the oxide of copper ; defendants used it in combination with oxide of copper and a suitable vehicle or medium. Defendants were held to infringe. Wonson v. Peterson et al., 3 Banning & Arden, 349.— Shbpley, 1878. 11. "Vulcanite and soft rubber are different things, having different properties, and are in no sense equivalents." Clarke v. Johnson, 16 Blatch. 495.— Benedict, 1879. 13. A compound of nitro-glycerine, paper stock, and saltpetre, and also a compound of nitro-glycerine, sawdust, charcoal, and saltpetre (defendants' mixtures) are each the equivalents of a compound of nitro-glycerine and infusorial earth (complainant's mixture)'. Atlantic Giant Powder Co. v. Dittmar Powder M'fg Co. et al., 17 Blatch. 531.— Blatchpord, 1880. 13. Complainant stated that in his improve- ment in bleaching xyloidine he used " any of the well-known means, preferring a solution of chlorine, or a solution of chloride of lime or soda. ' ' Defendant used permanganate of potash, which was a known bleaching agent. Held, to be an equivalent and an infringement. Spill v. Celluloid M'fg Co., 18 Blatch. 190.— Blatch- pord, 1880. 14. A patent for a packjng material composed of forty per cent and over of refractory matter, held together by a skeleton of soft rubber, is not infringed by a packing which consists of refrac- tory matter held together by a skeleton of vul- canite, the latter having advantages in use not found in the former. The difference in action is proof of substantial difference in the com- pounds. Clarke v. Johnson, 18 Blatch. 450. — Benedict, 1880. 15. Complainant's patent was for " the em- ployment of finely powdered flint, quartz, or feldspar, mixed with oil or other fluent sub- stance," as a wood filler. A prior patent (de- fendants') was for " the use of silicious marl or infusorial earth for the purpose of filling and polishing wood." Powdered rotten-stone and the like had been previously used for the same purpose. Defendants infringed the first-men- tioned patent, and attempted to justify under the 270 EQUIVALElSiT— MECHANICAL. second, showing that the materials mentioned 'in hoth patents were chemically alike. Complain- ant's material had the advantages of being non- absorbent, and of being angular in its particles. Held, that complainant's patent was not antici- pated by defendants'. Bridgeport Wood Finish- ing Go. V. Hooper et al., 18 Blatch. 459.— Ship- man, 1880. 16. Complainant had patent for a process of producing bronze color on iron, and for the product, the process being to clean the casting from sand and scale, then coat it with oil or oil varnish, and subject to high heat. In a prior suit, on the merits, complainant had not claimed that his patent covered the case where the iron and oil were not both oxidized. Defendants made articles by first oxidizing the iron, then varnishing, and heating to a less degree than would oxidize the varnish. A provisional in- junction had been granted in the present suit. Motion for attachment for contempt of court in violating the injunction denied. Tucker v. Bur- ditt et al, 5 Fed. Rep. 808.— Lowell, 1880 ; Tucker v. GorUn, 5 Fed. Rep. 810. — Shipmait, 1880. 17. Complainant coated cast iron with as thin a coat of oil (or oil varnish) as was practically possible, and then subjected the article to a high heat, which, acting on the iron and oil jointly, produced a hard bronze-colored surface. A thicker coat of oil varnish baked on at a heat of 420° Fahrenheit was old. Defendants first oxi- dized the iron at a heat of 480°, and then baked on a tolerably thick coat of copal varnish at 300°. Defendants held not to infringe. Tucker v. Sar- gent & Go., 19 Blatch. 538.— Shipman, 1881. 18. Complainant's patent being limited to that alcohol which is spirits of wine, the use of methyl alcohol, which is wood alcohol, is not an infringement. Spill v. Celluloid M'fg Go.. 10 Fed. Rep. 390.— Blatchfokd, 1883. 19. Where the constituents of two medical compounds are the same, and they are combined to produce the same results upon the same principle, they are substantially the same com- pounds, although the proportions vary slightly. New York Phar. Ass'uy. Tildenetal., 31 Blatch. 190.— Wallace, 1883. 30. The claim of the patent in suit was : " I claim as my invention (1) the sulpho-conjugated compound of rosaniline, possessing the proper- ties specified, as a new article of manufacture ; (3) the method herein specified of manufacturing the within-described sulpho-conjugated com- pound of rosaniline, substantially as set forth." The claim of another patent was : " What I claim as new, and desire to secure by letters- patent, is, (1) as a new article of manufacture, the dye-stuff or red coloring matter having the characteristics above set forth ; (3) the within- described process for producing a new dye-stuff or red coloring matter, by the action of crystal- lizable sulphuric acid, commonly calted ' anhy- drous sulphuric acid,' or 'fuchsine,' substan- tially in the manner set forth." These were held to be for the same thing. HolUday et al. V. Pickhardt et al., 29 Fed. Rep. 853.— Wal- lace, 1887. 21. Complainant coated cast iron with as thin a coat of oil (or oil varnish) as was practically possible, and then subjected the article to a high heat, which, acting in the iron and oil jointly, produced a hard bronze-colored surface. A thicker coat of oil varnish baked on at a heat of 420° Fahrenheit was old. Defendants first oxi- dized the iron at a heat of 480° and then baked on a tolerably thick coat of copal varnish at 300°. Defendants held not to infringe. Plum- mer Adm'r v. Sa/rgent et al., 130 U. S. 443. — Sup. Ct. 1887. EQUIVALENT -MECHANICAL. Cases. 1. The jury, it may be inferred, found de- fendants' bell, suspended by a coiled spring from a cross-bar uniting two uprights, not to be the equivalent of plaintiff's bell, attached by a horizontal bar to a vertical upright. Parks v. Little et ail., 3 Wash. 196.— Wash. 1818. 3. "If the same effects are produced by the same mode of operation, the principles of each are the same. ' ' WMttemore et al. v. Cutler, 1 Gall. 478.— Stobt, 1813. 3. The material question is, whether the given effect is produced substantially by the same mode of operation and the same combinations of power in both machines. Odione v. Winkley, 2 Gall. 51.— Stobt, 1814. 4. A lever of the second order, bearing a fric- tion roller operating against an incline to close a gripping jaw, is the same in substance as a lever of the first order operating through a tog- gle-joint to close a gripping jaw. Chay et al. v. James etal., 1 Peters's 0. C. 394.— Wash. 1817. 5. " Where the machines are substantially the same, and operate in the same manner to pro- duce the same result, they must be in principle the same. " Difference of degree in result is not a difference in result. — 75. 6. The jury found, it may be inferred, that a round barrel pump, with butterfly valves of oval shape, connected in the centre and resting EQUIVALENT- MECHANICAL. 371 on a rim, is not substantially the same as a square barrel pump, with butterfly valves of tri- angular shape, connected in the centre and rest- ing on the sides of the pump. Lowell v. Lewis, 1 Mason, 182.— Story, 1817. 7. " Different combinations of mechanical parts to effect the same purposes" do not con- stitute substantial identity. — iJ. 8. Mere change in form and proportion are not change in substance. Pettibone v. Der- ringer, 4 Wash. 215.— "Wash. 1818. 9. "If the two machines . . . operate in the same manner to produce the same result— though they may differ in form, proportion, and utility ^they are the same in principle." Evans v. Eaton, 3 Wash. 443.— Wash. 1818. 10. " The different mechanical powers are not one and the same power ; . . . a motion which is communicated by a screw is not communicated in the same way as that by a lever, a wheel, a wedge, or a pulley." Barrett et al. \. Mall et al., 1 Mason, 447.— Story, 1818. 11. Principle means not " an elementary truth or power," but " the peculiar structure or con- stituent parts." — IJ). 12. A screw is not substantially the same thing as a rack and pinion. — Lb. 13. The jury found, it may be inferred, that printing with steel plate is substantially the same thing as printing with copper plate. Kneass v. Schuylkill Bank, 4 Wash. 9.— Wash. 1820. 14. The safest guide in making the distinction between change in form and change in principle, is first to ascertain what is the result to be ob- tained ; whatever is e.ssential to that object, in- dependent of mere form or proportions, may be considered as the principle. Treadwell et al. v. Bladen, 4 Wash. 703.— Wash. 1827. 15. It seems that the inventor of a machine may specify equivalents for the parts and thisre- by cover them. Ryan et al. v. Goodwin etal., 3 Sumner, 514.— Story, 1839. 16. " Where a similar effect is produced by a combination of the mechanical powers, though the machines may be somewhat different in their structure, in principle they are the same. ' ' Brooks et al. V. Jenkins et al., 3 McLean, 433.— Mc- Lean, 1844. 17. The revolving cutter of the Woodworth patented planer was of equal diameter through- out. Another party substituted a cone-shaped cutter. The two things were held to be substan- tially the same. Vom Hook v. Pendleton et al., 1 Blatch. 187.— Betts, 1846. 18. In Woodworth's patented planer, friction rollers were used for the double purpose of pro- pelling the boards and of pressing them down upon the carriage. In defendant's machine the rollers were omitted, and the boards were pressed down upon a moving carriage by means of a screw and spring. Defendant's device was held in substance the same as complainant's. Oibson V. LLarris, 1 Blatch. 167. — Nelson, 1846. 19. In Blanchard's lathe the lateral motion was produced by a screw ; in defendant's machine, by a wheel and axle. In Blanchard's machine the cutter wheel and friction wheel had a lateral motion, while in defendant's machine the pat- tern and the rough material had the lateral mo- tion. The two machines were thrown in and out of gear in a different manner. In Blanch- ard's machine the axes of motion of the cutter wheel and the raw material were parallel,^ while in defendant's machine they were not. In Blanchard's machine the form of the periphery of the friction wheel and that of the cutter wheel were the same, while in defendant's machine they were different. The two machines were held to be substantially the same. Blanchard's Ounstock Turning Factory v. Warner, 1 Blatch. 258. — Nelson, 1848. 20. Where, in a car wheel the plates connect- ing the tii-e and the hub are made convex, to al- low contraction in cooling in the process of cast- ing, any other form reaching the same end is substantiall}' the same thing. Many v. Jagger et al., 1 Blatch. 872.— Nelson, 1848. 21. " The word ' principle,' as applied to me- chanics, is where two machines or things are made to operate substantially in the same way so as to produce a similar result, they are consid- ered the same in principle. As where any of the mechanical powers, the lever, the screw, the wheel, etc. , are used to accomplish certain pur- poses, the same powers being used in a some- what different form to do the same thing, will not be a difference in principle. Whether the mechanical instruments be larger or smaller, whether their action be horizontal or vertical, the principle is the same." Baberts et al. v. Ward et al., 4 McLean, 565.— McLean, 1849. 22. " By equivalent in machinery is usually meant the substitution of merely one mechani- cal power for another, or one obvious and cus- tomary mode for another of effecting a like re- sult." Smith V. Downing et al., 1 Fish. P. C. 64.— Woodbdry, 1850. 23. Where complainant's device cannot be made to do that which is done by defendants' device, it would seem that the two are not equiv- alents, and defendants do not infringe.— /J. 24. A machine while at rest may appear not to be the same as another machine, but its prod- 272- EQUIVALENT— MBCHAlSriCAL. uct, when in motion, may be conclusive of iden- tity. Sloatv. Patton, 1 Fish. P. C. 154.— Kane, 1853. 35. " There are many devices in construction that can be made by a skilful mechanic, differ- ing very much from each other in appearance, but which, in the eye of the patent law, are re- garded as identical. For instance, an inventor, in the construction of his machine, desires a given power in order to give practical operation and effect to his discovery. One mechanic may furiiish the power by means of a lever, another by means of a screws-two very different instru- ments—yet, so far as the use of the instruments and so far as their purpose to furnish power is concerned, they are regarded simply as mechani- cal equivalents, and the use of one in one ma- chine does not distinguish that machine from a machine in which the other is found. So, too, a given power may be obtained by a spring, or by a weight, or by a pulley — apparently very different devices. Yet, as they are used for the same iDurpose and to accomplish the same end in machinery, they are regarded substantially as identical." latham ,et al. v. Le Roy et al., 3 Blatch. 474.— Nelson, 1853. 26. " There are mechanical equivalents by the use of which . . . whole features may be changed and a great departure made from the apparent principle and combination of the ma- chine, and yet it may operate well. " Blanchard V. Beers et al., 3 Blatch. 411. — Nelson, 1858. 26(1. The doctrine respecting the use of me- chanical equivalents is not confined to those elements which are strictly known as such in the science of mechanics. Foster v. Moore, 1 Cur- tis 'sC. C. 279.— CuKxra, 1852. 27. " Where two devices are capable each of doing the same thing and in substantially the same way, they must be equivalents of each other ; and when one has been used the other is not patentable." Broughton, Enos, In re, 1 MacArthur's P. C. 278.— Morsell, 1854. 38. " The rule on the subject of mechanical equivalents ... is, that ' the identity of pur- pose, and not of form or name, is the true cri- terion in judging of similarity or dissimilarity of two pieces of mechanism ;' or ' whether one thing is a mechanical equivalent of another,' is a matter of fact to bs judged on the testimony of experts or on an inspection of the machines ; and, in the language of the books, it is an infer- ence to be drawn from all the circumstances of the case, by attending to the consideration whether the contrivance used by the one party is used for the same purpose, performs the same duties, or is applicable to the same object as the contrivance tised by the other party." — lb. 39. "A rod is the known equivalent of an endless chain, in machinery, where it can be used for the same purpose and with like effect." Spain et al. v. Gamble et al., 1 MacArthur's P. 0. 358.— MOBSELL, 1855. 30. "By the abuse of this doctrine of me- chanical equivalents, experts can demonstrate every machine which effects a certain purpose to be substantially the ^ame with every other which effects the same purpose. " Sickles et al. V. Gloucester M'fg Co., 3 Wall. Jr. 196.— Gbikr, 1856. 81. The fact that one device is weighted with levers and the other with springs makes no dif- ference. Foss et al. v. Herbert, 1 Bissell, 121. — Drttmmond, 1856. 33. Although plaintiffs' patented device may show a roller for holding down the material operated upon, and although defendant may substitute a spring therefor and thereby get ad- ditional advantages, yet, if the spring perform.s the function of the roller, so far forth it is an infringement. — lb. 38. " Equivalents are to be known by an in- ference to be drawn from all the circumstances of the case, by attending to the consideration whether the contrivance used by the appellant is used for the same general purpose, performs the same kind of duties, or is applicable to the same object as the contrivance used by the pat- entee." Nutting, M., In re, 1 MacArthur's P. C. 455.— MoRSELL, 1856. 84. ■ ' Substantial identity is such an arrange- ment of mechanism as performs the same ser- vice and produces the same effect in substan- tially the same way. It is identity of principle. ' ' Page v. Ferry, 1 Fish. P. C. 298.— W'ilkins, 1857. 35. "Mechanical equivalents . . . are fre- quently resorted to in order to disguise the true character of the machine, and to conceal an in- fringement by changing the form of a machine, while its principle, its spirit, and its substance are retained." Conover v. Boach et al., 4 Fish. P. C. 13.— Hall, 1857. 36. " It is not enough, in order to show that one mechanical device is the equivalent of an- other, that it accomplishes the same result ; that it produces the same effect, unless the effect is pro- duced by substantially the same mode of opera- tion. In other words, the ultimate end and ob- ject of a machine may be to produce a fabric or manufacture of a certain kind, and it may well appear, in the progress of invention, that several different inventors may have invented different EQUIVALENT— MECHANICAL. 273 machines, producing the fabric or that manu- facture by entirely different modes of opera- tion." — lb. 37. " Mechanical equivalents are spoken of as different from equivalents that merely pro- duce the same result. A mechanical equivalent, ... as generally understood, is where the one may be adopted instead of the other by a per-' son skilled in the art, from his knowledge of the art." Johnson v. Boot, 1 Fish. P. C. 351.— Spragtje, 1858. 38. " There may be equivalents in producing the same results, each of which is an indepen- dent matter of invention, and in that sense they are mechanical equivalents. . . Suppose, in early days, the problem was to get water from a well to the surface of the earth. One man takes a rope made of grass and draws up a pail of water ; another would see that, as a mechanical equivalent, a rope of hemp would accomplish the same result. But suppose another person comes, and for the first time invents a pump. That is equivalent in the result of bringing the water to the surface of the ground ; in that re- spect it is equivalent, in producing the result, to hauling it up by a rope, but is not mechanically equivalent ; it brings into operation . . very different powers and forces, and would require invention to introduce it." — lb. 39. "If a person has an invention in which lie is called upon, by the patent law, to make a full and clear description of the thing he has in- vented, if another person looking at that can, from his knowledge of the subject, pass to the other thing that is used, without any invention, then the one is substantially the same as the other. It is not that every unskilled person shall see how they pass ; but what is required is, that it shall be so described that those skilled and competent in the art, those who understand it, shall be able (not that an ingenious man can, seeing the new machine, sit down and find some- thing else afterward, perhaps aided in some de- gree by that in inventing something that is not there, but whether, with a competent knowledge of his art, he will be able), by looking at that with care and examining it, to see that it may be done in a different mode, in a different man- ner, and it is done in that different mode or that different manner by the use of the knowledge which he has in the art." — lb. 40. "A mechanical equivalent is a device which performs substantially the same office with the thing described in substantially the same way." Conover v. Ba/pp, 4 Fish. P. C. 57. — IngbbsoIjL, 1859. 41. If an element of a patented machine be eliminated and a mechanical equivalent substi- tuted therefor, the substantial identity of the machine is not changed. — lb. 42. Where a patent is granted for a combi- nation made of several elements, it covers and embraces known equivalents of each of the ele- ments. — lb. 43. " Where a party has discovered a result, as well as the machinery which produces it, he has the right to invoke the doctrine of equiva- lents in reference to infringers. Where he dis- covered a function that is new for the first time, and discovers a machine that is new, too, he ha-i a right to invoke the doctrine of equivalents to 'protect himself." Singer etal.Y. Walmsley,! Fish. P. C. 558.— Giles, 1860. 44. Complainant 's sewing-machine had a shut- tle. In respondent's sewing-machine the office of the shuttle was performed by the lower needle with an auxiliary hook ; and defendant's device was held to be a mechanical equivalent of the shuttle. Howe v. Williams, 2 Clifford, 245. — Clifford, 1863. 45. The surface of a table and the side of a shuttle-box, when employed as holding surfaces, are equivalent devices, the difference being mere- ly formal, resulting from a substitution of a vertical for a horizontal position. — lb. 46. " These abstract phrases, ' substantial identity, ' ' equivalent, ' ' mode of operation, ' etc. , are often used in sucli a vague and equivo- cal manner that they mystify and lead many to absurd conclusions, which will not distinguish between things that differ. That two machines produce the same effect will not justify the as- sertion that they are substantially the same, or that the devices used by one are, therefore, mere equivalents for those of the other. ' ' Burr V. Buryee, 1 Wallace, 531.— Sup. Ct. 1863. 47. A mechanical equivalent is that which " a mechanic of ordinary skill, in the construction of similar machinery, and having the plaintiff's specification and machine before him, could sub- stitute in the place of the mechanism described, without expensive experiments, and without the exercise of his inventive faculties. ' ' Burden v. Corning et al., 2 Fish. P. C. 477.— Hall, 1864. 48. Fastening with metal clasps is not equiva- lent to fastening with glue or cement. Doughty V. West et al., 3 Fish. P. C. 553.— Shipman, 1865. 49. " The doctrine of equivalents should be critically scanned where there may be a differ- ence in relation to two machines which, in some respects, operate by equivalent devices, and in other respects do not, to ascertain whether one has become a practical machine while the other 374 EQUIVALENT— MECHANICAL. has not." Sayles v. Chicago & N. W. B. B. Co., 1 Bissell, 468. — Dbummond, 1865. 50. "This question of identity . . . does not depend upon the appearance or form of the two structures claimed to be identical. It depends simply on the question whether they are the same in their mode and principle of operation, and whether one is a mechanical equivalent of the other. For it is obvious that there may be two machines very dissimilar in structure and appearance, which yet act upon precisely the same mechanical principles." Blanahard et al. V. Puttman et al., 3 Bond, 85. — Lbavitt, 1867. 51. " Technical equivalents do not belong to a mere combination of old elements. Such a combination is regarded merely as an improve- ment upon what was before known, and which, without such new combination, would have be- longed to the public. Inventors of such im- provements, if their rights are secured by letters- patent, may treat all others as infringers who malie, use, or vend to others to be used, any and every subsequent combination of those elements not substantially different ; and no such subse- quent combination is substantially different merely because the person constructing the ma- chine under it employs a different device for one of the elements, provided such device was, at the date of the first patent, a well-known substi- tute for the omitted element. ' ' Sands v. Wardell et al., 3 Clifford, 277.— Clifford and Clakk, 1869. 53. Where a combination is made up of old elements, ' ' the doctrine of mechanical equiva- lents does not apply." Orompton v. Belknap Mills et al, 3 Fish. P. C. 536.— Clark, 1869. 58. In a patent for a wire hoop for hat-brims, the ends of the hoop were described as joined by a ferrule. Defendant soldered these ends to- gether, and such soldering was held to be a me- chanical equivalent of the ferrule. MaMory et al. V. White, 8 Blatch. 552.— Blatchford, 1871. 54. " When, in mechanics, one device does a particular thing or accomphshes a particular re- sult, every other device known and used in me- chanics, which skilful and experienced workmen know will produce the same result or do the same particular thing, is a known mechanical substitute for the first device mentioned for do- ing the same thing or accomphshing the same result, although the first device may never have been detached from its work, and the second one put in its place. It is sufficient to constitute known mechanical substitutes, that when a skil- ful mechanic sees one device doing a particular thing that he knows the other devices, whose uses he is acquainted with, will do the same thing." Garter et al. v. Barker etal., 1 Sawyer, 513.— Sawyer, 1871. 55. Springs and set screws for adjusting the pressure of wringer-rolls are mechanical equiva- lents for wedges used for the same purpose. Bailey Washing & Wringing Machine Co. v, Lincoln et al., 4Fish. P. C. 879.— Lowell, 1871. 56. "The mere substitution of a mechanical equivalent or equivalents for one or more of the elements constituting the combinations and or- ganizations . . claimed, or any merely formal or fraudulently evasive change in the parts or arrangement embraced In the claim, would not relieve a party from liability as an infringer. " Taylor v. Oarretsonetal., 9 Blatch. 156. — Hall, 1871. 57. " If the ingredient substituted for the one withdrawn was a newly discovered one, or even an old one performing some new function, and was not known at the date of the plaintiff's pat- ent as a proper substitute for the ingredient with- drawn, it would avoid an infringement as a new combination or a newly discovered ingredient substituted for the one omitted ; or even an old one performing a new function, not known at the date of the plaintiff's patent as a proper sub- stitute for the one withdrawn, would not be an equivalent for the ingredient omitted within the meaning of the patent law ; nor could it be suc- cessfully claimed as such by the plaintiff in order to support the charge of infringement. Such an alteration is not a mere formal alteration, as the difference between the two improvements is such that the new combination would be the proper subject for a patent, and consequently would avoid the charge of infringement in a case like the one supposed by the court. ' ' Oould v. Bees, 15 Wall. 187.— Sup. Ct. 1872. 58. " Bona fide inventorsof a combination are as mucli entitled to equivalents as the inventors of other patentable improvements ; by which is meant, that a patentee, in such a case, may sub- stitute another ingredient for any one of the in- gredients of his invention, if the ingredient sub- stituted performs the same function as the one omitted, and was well known at the date of his patent as a proper substitute for the one omitted in the patented combination. Apply that rule, and it is clear that an alteration in the patented combination which merely substitutes another old ingredient for one of the ingredients in the patented combination is an infringement of the patent, if the substitute performs the same func- tion and was well known at the date of the pat- ent as a proper substitute for the omitted ingre- dient ; but the rule is otherwise, if the ingredi- t f EQUIVALENT— MECHANICAL. 275 ent substituted was a new one, or performing a substantially different function, or was not well known at the date of the plaintiff's patent as a proper substitute for the one omitted from his patented combination." — lb. 59. " It is not always enough to prove that two combinations or elements are equivalent, to show that such element of the combination in one may be regarded under some circumstances as the equivalent of the corresponding element in the other, when the elements are separately considered. If the mechanical combination of the members of the two machines be such that tfie action and mode of operation differ in the two machines, then one is something more than a mere mechanical equivalent for the other." Blake et al. v. Bawson, 1 Holmes, 300. — Shep- LEY, 1872. 60. "A device is not less an equivalent of an- other merely because, superadded to all the functions of such other, it may perform a further office. Still less does it fail to be the equivalent of another because, beside all the functions of such other, it performs some one of the offices more effectively or better, so long as it performs them in substantially the same way and uses sub- stantially the same means." Wheeler, Jr., v. Clipper Mower & Reaper Co., 10 Blatch. 181.— WOODRDPF, 1872. 61. " A device which, both mechanically and practically, performs the same precise office of another device in substantially the same man- ner," is not " any less an equivalent of the lat- ter because it also performs another office or offices by reason of a difference in its mechanical construction." Saroen v. Hall et al., 9 Blatch. 524.— Woodruff, 1873. 63. "In many organizations of machinery it would be true that the one might be a mere me- chanical equivalent of the other, where the same result would be produced by substantially the same operation. ' ' Child v. Boston & Fair Haven Iron Works Co., 1 Holmes, 303.— Shbplbt, 1873. 63. " The substantial equivalent of a device is the same as the device itself — that is, if the pat- ent mentions a specific mode of effecting a pre- scribed result, the substitution of any one or more mechanical equivalents for those specially mentioned will none the less work an infringe- ment. The object sought by the modes of effect ing the same substantially as stated in the pat- entee's specifications is covered by the patent, and whoever adopts the patentee's plan and works out the same result by merely substitut- ing for one or more mechanical devices their mechanical equivalents or devices, is just as guilty of an infringement as if he copied the patentee's device in all its parts. " Westlake"^. Cartter et al., 6 Fish. P. C. 519.— Treat, 1873. 64. In complainant's patented stone-breaker, one jaw was fixed and the other movable, its motion being produced by a revolving shaft, an iron connecting rod and a crank, the return mo- tion being secured by spiral springs. In defend- ant's machine a water cylinder and piston was substituted for the revolving crank. The de- vices were held to be equivalents. Blake v. Boiertson et al., 11 Blatch. 237.— Hunt, 1873. 65. To hold a nut stationary and have a screw move endwise thereon by rotation is the me- chanical equivalent of holding the scx-ew station- ary and having the nut move endwise of the screw by rotating it upon the screw. King v. Louisville Cement Co., 6 Fish. P. C. 336.— Bal- lard, 1873. 66. In fluting-machines, a rack and jDinion is the mere equivalent of a screw for the purpose of adjusting one of the rolls. Knox et al. v. Loweree etal., 1 Banning & Arden, 589. — Nixon, 1874. 67. By a mechanical equivalent in a case of combination '■' is meant that the ingredient sub- stituted for the one withdrawn performs the same function as the other, and that it was well known at the date of the patent securing the in- vention as a proper substitute for the one omit- ted in the patented combination. ' ' Oill v. Wells, 22 Wall. 1.— Sup. Ct. 1874. 68. " It is an axiom in mathematics and me- chanics, and a self-evident truth of universal ap- plication, that the same causes produce the same results. If, therefore, . . . two inventions are substantially the same in fact, whatever may be claimed by either party in effect, in contempla- tion of patent law they are one as a necessary and legal consequence. The subsequent inven- tion . . . must yield to the prior patent. ' ' Mer- rill, R. 8., In re, 1 MacArthur, 301. — Cartter, 1874. 69. Winding a rope around a drum, and pass- ing the rope around a series of pulleys to the free ends of which ropes counterpoise weights are attached, are equivalent means of winding up a rope to which a weight is attached. Tufts et al. V. Boston Machine Co., 1 Holmes, 459. — Sheplby, 1875. 70. "Mechanical equivalents are not those merely which produce the same result. ' A mechanical equivalent, . . . as generally under- stood, is where the one may be adopted instead of the other, by a person skilled in the art, from his knowledge , of the art.'" Smith et al. v. Marshall et al., 2 Banning & Arden, 371.— Mc- Kbnnan, 1876. 276 EQUIVALENT— MECHANICAL. 71. " The substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself ; so that if two devices do the same work in substantially the same way, and ac- complish substantially the same result, they arc the same, even though they differ in name, form, and shape." Union Paper Bag Machine Oo. et al. V. Murphy et ah, 97 U. S. 120.— Sdp. Ct. 1877. 72. The patent in suit being for a harvester, a mere hook used by defendants was held to be the mechanical equivalent of the swivel-joint in the patent. Oraham v. Oammon et al., 7 Bissell, 490. -Blodgett, 1877. 73. In complainant's patented skate clamp the backward and forward movement was given by a screw, and in defendant's skates by a lever cam. The two devices were held to be mechani- cal equivalents. Turrell v. Speath, 3 Banning & Ai-den, 458.— Nixon, 1878. 74. A single perforated cylinder may be the substantial mechanical equivalent of two per- forated cylinders to regulate the flow of air to the exterior of the flame of a lamp. Williams V. Borne, Watertown & Ogdenstmrg B. B. Co., 15 Blatch. 300.— Blatckford, 1878. 75. " Pressure in a machine maybe produced by a spring or by a weight ; and where that is so, the one is a mechanical equivalent of the other. Cases arise also where a rod and endless chain will produce the same effect in a machine ; and where that is so, the constructor, in operating under a patent, may substitute the one for the other, and still claim the protection which the patent confers. Exactly the same function in certain cases may be accomplished by a lever or a screw, and where that is so, the substitution of the one for the olher cannot be regarded as invention." ImTieauserv. Buerk, 101 U. S. 647. —Sup. Ct. 1879. 76. A court construed the expressions ' ' insolu- ble india-rubber" and " gutta-percha" to mean one and the same thing. Oolgate v. Odd & Stock Telegraph Co., 16 Blatch. 503.— Blatch- FOBD, 1879. 77. A spring attached to the rear end of an electro-magnet armature lever, and having a set screw to regulate its tension (defendant's device), is the mechanical equivalent of a weight which is a nut moving on a screw thread cut on the rear end of such a lever (complainants' device). Page et al. V. Bblmes Burglar Alarm Tel. Co., 17 Blatch. 484.— Blatchfokd, 1880. 78. Complainants' bolt for window catches had a plain round stem at the rear end recipro- cating in a round hole in the rear end of the case which held the bolt. Defendants used a stem which did not pass out of the rear end of the case, but was furnished with short, radial arms extending to and reciprocating upon the inside of the case. Defendants' stem was held to be a newly discovered substitute, and therefore not an equivalent. Babcoek et al. v. Judd et al., 1 Fed. Rep. 408.— Shipman, 1880. 79. Complainant's patented knitting-machine " consisted of a stationary needle cylinder grooved to hold the needles in a vertical position. Around this was a rotary cylinder, with a por- tion of its periphery formed with a projection on which the heels of the needles rested. To this cylinder were attached the actuating cams, which operated on the heels or butts of the needles, and which accomplished the knitting by the alternate elevation and depression of the needles. " As to one of defendant's machines, he testified that it differed from complainant's in that, ' ' instead of the swing cam, he used a curved piece of metal secured to the cylinder, the ends of which projected above the needle head ;" and as to the other, " he used the swing cam similar to the Leech" (an earlier) " machine ; but, instead of employing the butts of the needle to lift the end of the sw'ing cam up to free the latch, the yarn carrier had been adapted to effect the same object ; and to throw down the swing cam, a simple weight had been attached to the end thereof." . . " It is quite obvious that these changes are merely equivalents of the complain- ant's devices. ' ' Bickford v. Laporte, 3 Fed. Rep. 214. -Nixon, 1880. 80. For a comparison of equivalent construc- tions in the matter of the manufacture of rubber boots and shoes — double extension gore flap— see — . Ewry et al. v. Gandee et al. , 3 Fed. Rep. 543. -Shipman, 1880. 81. The subject-matter of the compared pat- ents was a joint for flat-sided cans. Covell's, by which it was sought to anticipate complain- ant's, showed the joint as an open gutter, relying upon the solder for the strength of the joint. Complainant's patent showed the sides of the gutter closed together upon the lap from the next plate, giving strength to the joint aside from the solder. Held, that the two were differ- ent in kind, and complainant's patent sustained. Banker v. Bostwick et al., 3 Fed. Rep. 517.— "Wheeler, 1880. 83. One element of complainant's patented combination in water-works apparatus was a piston acted upon by the pressure of water in the mains to shut off the motive power and slacken the pumps. In defendant's apparatus the increasing pressure in the main decreased the amount of water pumped, by acting upon EQUIVALENT -MECHANICAL. 277 a valve which opened and closed a duct leading from one end of the pump cylinder to the other, so that the water passed back and forth through said duct instead of onward out of the pump. Said the judge : " The means are the same, the result is the same, and the mode is different only in form. ' ' Holly v. Vergennes, 18 Blatch. 337.— Wheelek, 1880. 83. For different but equivalent constructions in pumps, see — . Adair v. Tliayer, 17 Blatch. 468.— Wheeler, 1880. 84. For a comparison of hydraulic elevator machinery, resulting in finding the two systems not mechanical equivalents, see — . Stebbins Hy. El. M'fg Co. et al. v. Stebbins, 4 Fed. Rep. 445.— Blatchpokd, 1880. 85. " Action by weight in one case and by spring in another are equivalent actions." Pot- ter et al. V. Stewart, 18 Blatch. 561. — Blatch- POKD, 1881. 86. In complainant's patented machine for heading cartridge shells, a die carried a sliell against a hunter and headed it. In defendant's machine the hunter moved against the fixed die. Held to be an infringement. Union Mt. Cart- ridge Co. V. U. S. Cartridge Co., 7 Fed. Rep. 344.— I;OWELL, 1881. 87. A spring and a weight are mechanical equivalents. Consolidated Safety- Valve Co. v. Crosley Steam Gauge & Valve Co. , 7 Fed. Rep. 768.— Lowell, 1881. 88. Where two or more rollers had been need- ed to accomplish a given result, a single roller that does the work better is not the mechanical equivalent of ttie earlier structures. Cote et al. V. Moffitt, 8 -Fed. Rep. 153.— Lowell, 1881. 89. In complainant's patented device for bracket sewing-machines, an elastic lever was used to relieve against the action of the thumb- screw. Defendants used a rigid lever in con- nection with a coil spring. Held that defendants used well-known equivalents and infringed. Singer M 'fg Co. v. Henry Stewart M'fg Co. et al., 8 Fed. Rep. 930. — Wheelbk, 1881. 90. By the court: "For some purposes, in considering questions arising on letters-patent, bent lugs and riveted pins may be the equiva- lents of each other ; but, in considering the ques- tion of novelty of the plaintiff's loops, riveted pins are not the equivalents of the bent lugs." Crandall v. Walters et al., 30 Blatch. 97.-— Blatchfoed, 1881. 91. " A majority of patents granted in modern times are for such inventions" (combinations), " and they are none the less entitled to protec- tion, and none the less valuable on this account. . . . Such a machine is infringed whenever an- other employs substantially the same combina^ tion, in plan and elements, operating in the same manner and producing substantially the same result. . . . The doctrine of equivalents, with sliglit modification, applies with as much force to such an inventiop as to any other. . . . The old elements from which one individual lias drawn are open to all. It is the peculiar com- bination whioli one has effected that another shall not copy." Dederick v. Cassell et al., 9 Fed. Rep. 806.— Butlbk, 1881. 93. " For a case of infringement arrived at by finding -defendant's devices — which were ' un- like in form ' to complainant's — mechanical equivalents for complainant's, ' ' see — . Oraliam V. Geneva Lake Crawford Wf'g Co., 11 Fed. Rep. 188.— Dyer, 1880. 93. Although springs and weights are ordina- rily mechanical equivalents, yet where a weight will not perform the desired functions as well as a spring, the weight is not the equivalent of the spring. Cross v. Maekinnon, 30 Blatch. 895. — Wheeler, 1883. 94. By the court : " The right of complainant to change the form of construction from that shown in his patent, and substitute a well-known equivalent for it, is fully established." Put- namY. Hutchinson, 11 Bissell, 333. — Blodgbtt, 1883. 95. For example of mechanical equivalents in loom mechanisms, see — . Webster Loom Co. v. Higgins et al., 105 U. S. 580.— Scp. Ct. 1883. 96. In a machine for making buckle levers, the substitution of one spring for two springs, and locating it upon a mandrel instead of upon the dies, is an immaterial variation so far as the question of infringement is concerned. Sprague V. Smith & Griggs Mf'g Co., 13 Fed. Rep. 731. — Shipman, 1883. 97. A ratchet mechanism used as a feed and a feed-screw are mechanical equivalents. Aram et al. V. Matine Wagon Co., 16 Fed. Rep. 336.— Blodgbtt, 1883. 98. Where complainant attained the adjusta- bility of his windmill, with reference to the force of the wind by a weight, and defendants at- tained the same end by a spring, defendants were held to infringe. Eclipse Windmill Co. v. May etal., 17 Fed. Rep. 344.— Blodgbtt, 1888. 99. For an example of nailing machine mech- anisms held to be mechanical equivalents, see — . Dunham v. Kimbcull et al., 17 Fed. Rep. 810.— Lowell, 1883. 100. Where the claim in a patent on a drive screw specified a " conoidal point," and defend- ant had a straight taper at this place, the court said : " The straight taper would, with the en- 378 ESTOPPEL. larged base, be the equivalent of the oval taper for separating the fibres of the wood to admit the threads, and this change is merely colorable. ' ' Fetter et al. v. Newhall, 21 Blatch. 445. — Whbblbb, 1883. 101. Complainant's waxing machine and roller took up the melted wax and spread it upon the paper. In defendants' machine the paper was carried through the bath of melted wax. De- fendants' process was held to bo the mechanical equivalent of complainant's. Hammenchlag M'fg Co. v. Wood ct al., 25 O. G. 700.— Lowell,, 1883. 102. " It is well settled that immaterial changes or the substitution of mechanical equiv- alents will not relieve a party from the charge of infringement. ' ' - Brighton v. Wilson, 18 Fed. Rep. 378.— Colt, 1883. 103. "Where, in a patented combination, the defendant uses, as a substitute for one of the ele- ments, a diffei-ent part performing the same function, which is an equivalent therefor, he is an infringer. Child v. B. & F. H. Ii-on Works, 19 Fed. Rep. 258.— Lowell, 1884. 104. For an example of a defendant held an infringer who used complainant's patented com- bination, substituting an equivalent for one ele- ment thereof, see — . Mundy v. Lidgerwood M'fg Co., 20 Fed. Rep. 114.— Whbblbr, 1884. 105. For instance of mechanical equivalents in mowing machines, see — . Mussey M'fg Co. V. Wm. Beering & Co. et al., 20 Fed. Rep. 785. — AcHESosf, 1884. 106. For an example of mechanical equiva- lents in trunk-fasteners, see — . Sessions v. Bomadkaet al.,21 Fed. Rep. 124. — Dyer, 1884. 107. " It has never been held that an equiva- lent known at the date of the invention could be used without infringing the patent." KuJilv. Mueller et al., 21 Fed. Rep. 510.— Sage, 1884. 108. For an example of mechanical equiva- lents in cultivators, see — . Brown M'fg Co. v. Buford et al., 21 Fed. Rep. 714.— Blodgett, 1884. 109. " Where one patented combination is as- serted to be an infringement of another, a device in one, to be an equivalent of a device in the other, must perform the same functions." Bowell et al. v. Lindsay et al., 113 U. S. 97.— Sdp. Ct. 1885. 110. " An equivalent must perform the same function in substantially the same manner as the part for which it is substituted." Oage v. Kel- logg et al., 28 Fed. Rep. 891.— Coxb, 1885. 111. " A mechanical equivalent, as generally understood, is where one may be adopted instead of the other by a skilful mechanic accustomed to machinery, with a competent knowledge of mechanical powers. If such a man, seeing a new machine, and having a full description of the thing invented, can, by examining it with care, see that the required thing can be done in a different mode, and it is done in that different mode by the knowledge which he has of his business, he has not produced a new invention, nor one substantially different from the origi- nal." May V. County of Fond du Zac, 27 Fed. Rep. 691.— Dtbe, 1886. 112. Belt gearing is a well-known and exact equivalent for a cog arrangement. Cohansey Glass M'fg Co. v. Wharton, 28 Fed. Rep. 189. — BUTLEK, 1886. 113. Using a rod to operate the spring-locking bolt of a window transom is the mechanical equivalent of a cord and pulley used for the same purpose. Wollensaek v. Beiher, 28 Fed. Rep. 424.— Blodgett, 1886. 114. A piston packing consisting of two disks, one of which has a conical projection and the other a conical recess tlierein, is a mechanical equivalent of a piston packing consisting of two disks, one having a convex projection and the other a concave recess fitting thereon. United States Metallic Packing Co. v. Tripp, 31 Fed. Rep. 350.— Colt, 1887. ESTOPPEL. Cases. 1. " Grant of a subsequent patent for an in- vention is an estoppel to the patentee to set up any prior grant for the same invention." Query. Can such a subsequent valid patent be granted ? Barrett et al. v. Hall et al. , 1 Mason, 447.— Story, 1818. 2. A prior existing patent estops a second pat- ent for the same thing. Morris v. Huntington, '1 Paine, 348.— Thompson, 1824. 3. Where a licensee recognizes the validity of a patent in a license which by its terms is ter- minated at a certain time, in an action based on acts done after the termination of the license, the licensee is not estopped from denying the patentee's right. Bice v. Hotchkiss, 16 Connec- ticut, 409.— WILLL4.MB, 1844. 4. Where A, knowing that B makes preten- sions to be the inventor of a thing, yet buys an interest in C's patent for that thing, he is estop- ped from claiming that B is the inventor a3 against C. Parkhurst v. Kinsman et al., 1 Blatch. 488.— Nelson, 1849. 5. " Where a man has been silent when in conscience he ought to have spoken, he will be ESTOPPEL. 279 debarred from speaking when conscience re- quires him to be silent. " McGormick v. Howard, 1 MacArthur's P. C. 238.— Moksell, 1853. 6. Where a licensee has made and sold patent- ed machines under a licensor and for his ac- count, the licensee is estopped from alleging the invalidity of the patent as a reason why he should not account to the licensor. Kinsman et al. Y. Parkhurst; 18 Howard, 289. —Sup. Ct. 1855. 7. Where a licensee agrees with a licensor to work an invention under a royalty, and at the time of the agreement the licensee knows of an outstanding claim against the validity of the patented improvement of the other party, the licensee cannot purchase such an outstanding claim and set it up against the licensor when the licensor seeks to recover his royalty. — li. 8. A party purchased a right under a patent, covenanting ' ' to receive it as good and available to all intents and purposes, and that the transfer should not be liable for any objection for any supposed defect in the combination of said let- ters-patent if such supposed defect or objection should at any time arise." It was held that the vendee was estopped from alleging the invalidity of the patent. Heilner v. Battin, 27 Pa. State, 517.— WooDWAED, 1856. 9. A patentee is not estopped from showing that the patent is a nullity. King v. Gedney, 20 Law Rep. 631.— Moksell, 1857. 10. " Corporations as well as individuals can be estopped from denying that they have done certain acts, when they had the corporate power to do such acts. They have the power to waive rights and conditions in their favor, to transfer rights and privileges, and to assent to such trans- fer by others ; and, therefore, they can be estop- ped from saying that they have not done so." New England Car Spring Co. v. W. India-Bubber Co. etdl., 4 Blatch. 1.— Ingbbsoll, 1857. 11. "Practical acquiescence in the claim of another to a patent is both an estoppel against and abandonment by him who thus acts. ' ' Car- roll V. Oambrill et al., 1 MacArthur's P. C. 581. — MORSELL, 1858. 12. Where a license strictly construed required the consent of a third person, which had not been given, he who stood in the relation of a licensor who had accepted royalties was held to be estop- ped from setting up such lack of assent. Bloomer v. .Oilt>in et al., 4 Fish. P. C. 50.— Lbavitt, 1859. 18. Complainant sued his licensees as infring- ers. Complainant contended that the defend- ants were estopped from denying the validity of the patent by the recitals in the contract. The I court held otherwise, saying : " The respondents ! affirm the contract, and claim its protection ; it I is the complainant who seeks to nullify it. How j it could be declared void by one party and yet estop the other has not been explained. ' ' Burr v. Buryee et a?., 2 Fish. P. C. 275.— Gkibr, 1862. 14. " Recitals in a deed can estop no one but parties or privies who are claiming under or against it, in a controversy founded on its cove- nants. " — lb. 15. A licensee of a patented machine may purchase and use any other machine, and if such other machine be claimed to be an infringement by the licensor, the licensee may defend himself by any plea that any other person might use. — ■ lb. 16. In an action for the recovery of a license fee, defendant sought to attack the patent, but the court held that the defendant was not able to do this. Birdsall v. Perego, 5 Blatch. 251. — Hall, 1865. 17. " As , . ." to " the rule in respect to the conclusiveness of the verdict and judgment in a former trial between the same parties, where the judgment is used in pleading as a technical estoppel, or is relied on by way of evidence as conclusive, per ae, it must appear, by the record of the prior suit, that the particular controversy sought to be concluded was necessarily tried and determined — that is, if the record of the former trial shows that tlae verdict could not have been rendered without deciding the partic- ular matter, it will be considered as having set- tled that matter as to all future action between the parties ; and further, in cases where the rec- ord itself does not show that the matter was nec- essarily and directly found by the jury, evidence aliunde consistent with the record may be re- ceived to prove the fact ; but even where it ap- pears from the extrinsic evidence that the .matter was properly within the issue controverted in the former suit, if it be not .shown that the ver- dict and judgment involved its consideration and determination, it will not be conclusive." Packet Co. v. Sickles, 5 Wall. 580.— Sdp. Ct. 1866. 18. If complainants would have a former suit operate as an estoppel, it must be set up in the pleadings. Blandy et al. v. Oriffeth et al., 3 Fish. P. C. 609.— SwATNB, 1869. 19. Where, in making a contract of license, the licensee produces a model of the machine proposed to be made under the license, the li- censee is estopped from denying that the ma- chine comes within the patent to which the li- cense appertains. Eureka Co. v. Bailey Co., 11 Wallace, 488.— Sup. Ct. 1870. 280 ESTOPPEL. 20. "Where A, an inventor, describes his in- vention to B, and, believing B has described it to C, hears C describe the same, A is not there- by estopped from setting up his claim. BaM- road Co. v. Dubois, 13 Wall. 47.— Stip. Ct. 18TO. 31. A prior decided suit between the same parties is an estoppel upon the same patent. Dubois V. Phila. , Wilmington & Baltimore B. B. Co., 5 Fish. P. C. 308.— Giles, 1871. 32. By the court : " Nor is this supposed estoppel invigorated by the fact that invasion of the patentee's rights has been widespread, and that all who may be found in that category may be held liable accordingly. Whoever reaped where he did not sow wrongfully appropriates what belongs to another, and equity will not stay the hand of the rightful owner of the har- vest against him." M'Millen et al. v. Barclay et al, 3 Pittsb. 377.— McKexnan, 1871. 33. If defendants appropriated complainant's invention " without consulting him, and he was passive when he knew it, because he was pow- erless to prevent them, he is not estopped from asserting his right when in a condition to enforce it."— JJ. 34. Where an applicant for a patent acquiesces in a rejection made by the Patent Office, he is afterward estopped thereby. Dennis v. Cross etal.,3 Bissell, 389.— Blodgett, 1872. 35. If there is any fraud in the procurement of an extension, it does not lie with the patentee or his assigns to take advantage of that fraud. Bug- gies w. Eddy et al., 10 Blatch. 52. — Woodrupf, 1873. 26. Mistake of law furnishes no ground for escaping the force of the covenants in a license ; and, although the term of the license has ex- pired, the recitals and covenants in it bind and estop the licensee. Wooster v. Taylor et al., 13 Blatch. 384.— Blatchford, 1874. 27. In an interference proceeding between two patentees in a federal court, the defendants are not estopped by a statement made by their as- signor to the Patent Office respecting the date of the invention. Union Paper-Bag Machine Go. V. Crane et al., 1 Holmes, 429. — Lowell, 1874. 28. " It is well settled that, where the suit is upon a license or upon a contract, which license or contract contains covenants on the part of the defendants by which they admit the valid- ity of the plaintiff's patent, and agree to main- tain it by suits or legal proceedings, and there has been an enjoyment of the license by the de- fendants, they are estopped from denying the :truth of their admissions, unless it shall be averred, by cross-bill or answer, that such agree- ment was obtained by fraud, surprise, or im- position." Magic Buffle Co. v. Mm City Co., 13 Blatch. 151.— SmPMAN, 1875. 39. A party holding an assignment under a patent caimot maintain a right thereunder against another party equitably entitled to such assignment, when the first party took his as- signment with knowledge of the second party's rights. Newell et al. v. West et al., 13 Blatch. 114.— Wallace, 1875. 30. "Where an invention is assigned before it is patented, the assignor is estopped, upon ob- taining the patent, from setting up any adverse title (^Herbert v. Adams, 4 Mason, 15) ; and the doctrine applies with equal force where he has agreed to assign, because in such case the pur- chaser, upon tender of the purchase price, be- comes the equitable owner of the patent. " — lb. 31. " The general rule is, that aU matters which have been once determined by judicial authority cannot be again drawn into contro- versy as between the parties and privies to the decision. The parties, with some exceptions not necessary here to be stated, are named in the record. They have their day in court, are interested in the property or matters involved in the litigation, and have the right to give di- rection and control in the proceedings. Therj must be an end to strife, and where a person has been summoned to appear, or voluntarily appears, and has the opportunity to maintain or deny the issue presented by the pleadings in a cause, he is ever afterward estopped from con- troverting the truth of the facts directly decid- ed." Consolidated Fruit Jar Co. v. Whitney et al., 2 Banning & Arden, 30.— Nixon, 1875. 82. " It may be said, geinerally, that privies are those who are partakers or have an interest in any action or thing. The term privity de- noting mutual and successive relationship to the same rights of property, privies to a suit are those who are represented by the parties and claim under them. The principle on which they are bound by the proceedings is, that they are identified with the parties in interest ; and where such identity exists they are concluded by the result."— /J. 33. " An important qualification must be stated in regard to the estoppel of privies by a judgment or decree against those with whom they are in privity. In order Jp bind them as privies to the judgment, their succession to the rights of property affected by it should occur after the judgment ; or, if the law lis pendens is invoked, after the summons or subpoena. . . . One that has acquired his title previously must ESTOPPEL. 281 be made a party to the proceedings If he is to be bouud by the result." — li. 34. By "the law of lis pendens, ' ' the service of summons " is constructive notice of the pen- dency of the suit only to those who have ac- quired some title or interest in the property in- volved in the litigation from and under the parties to the suit, or some of them, since the suit was commenced. It is not applied, as may be inferred from the phrase itself, to parties whose rights were acquired before the suit was instituted against the grantors or vendors under whom they claim." — lb. 35. Suit for infringement was brought against A April 11th, 1873. B the title acquired from A in February, 1873. In April B conveyed all his rights to C. In July B was brought in as a party to the suit. The defendants claimed under the party C, and it was held that there was no legal obligation upon C to take notice of a suit pending against other parties, and that he was not estopped by the decree in another suit from maintaining the validity of his title. — lb. 36. So long as a licensee continues to work under his license he is estopped from denying the validity of the patent. Marsh v. Dodge, 4 Hun, 378.— Gilbert, 1875. 37. After a question has once been determined in court between two parties, each is estopped from contesting the same matter in another court thereafter. Consolidated Fruit Jar Co. v. Whitney et al., 2 Banning & Arden, 375. — Nixon, 1876. 38. Certain parties joined iu Conveying to a joint-stock corporation yet to be formed certain patents and other iDroperty. The defendants contended that such an agreement to convey property to a corporation yet to be formed was invalid. The court held that the principal, if not the only office of the agreement was, to in- dicate the intention of the parties in the forma- tion of a new pompany, and to show that the owner of the patents and those holdmg under liim were estopped from claiming certain prop- erty which said defendants had agreed, for a valuable consideration, to convey to the new company. — lb. 39. A, the assignee of a patent, sold to B the exclusive right to the use of the patented ma- chines in the State of Ohio. B then assumed to buy the patented machines of A, for use during the extended term. A subsequently held the extended term for a short time. B, being sued for infringement during the extended term, con- tended that the complainants, who claimed through A, were estopped from proceeding against B. It was held that B's purchase from A was in fraud of complain£|,nts' rights, and that B could not use the machines during the extended term. Union Paper Bag Machine Co. et al. V. Nixon et al., 1 Flippin, 491. — Emmons and Swing, 1876. 40. One Mann began suit against one Wright and another defendant. Pending suit Mann died, and the suit was revived by the executor. A decree that the patent was valid and defend- ants had, infringed was made, and the case was referred to a master. After entry of the decree, the present bill was filed against the defendant Wright and his co-defendant, who, since said trial, had been engaged in the infringing manu- facture. The present complainant had pur- chased the right to this patent from Mann's ad- ministrator. It was held that the present com- plainant was in full privity to the former decree, that the defendant Wright was also a privy thereto and bound thereby, and also that the other defendant, Wright's present partner, was so far in privity with the former case, by his partnership relation to Wright, that he was also bound by said decree. Dayton y. Wright et al., 2 Banning & Arden, 449. — Blodgbtt, 1876, 41. Where A sues B under an original patent and fails, then reissues his patent and again sues B, A is not estopped from prosecuting the lat- ter suit. Pickering et al. v. Phillips et al. , 4 Cliff. 383.— Clifford, 1876. 42. "A judgment of a court of competent jurisdiction upon a question directly involved in one suit is conclusive as to tliat question in another suit between the same parties. But to this operation of the judgment it must appear either upon the face of the record, or be shown by extrinsic evidence, that- the precise question was raised and determined in the former suit. If there be any uncertainty on this head in the record — as, for example, if it appear that the several distinct matters may liave been litigated, upon one or more of which the judgment may have passed, without indicating which of them was thus litigated, and upon wliich the judg- ment was rendered— the wliole subject-matter of the action will be at large and open to a new contention, unless this uncertainty be removed by extrinsic evidence showing the precise point involved and determined." Eussell v. Place et al., 94 U. S. 606.— Sup. Ct. 1876. 43. A commenced action at law against B for infringement of patent. The case went against B by default, because A and B had agreed that A should buy B's stock, and B should stop the manufacture. Subsequently B again began to manufacture, and A sued B, in equity, for in- fringement. Thereupon the court said : "Such 283 ESTOPPEL. an agreement, made with full knowledge of the facts and not under duress, and with no evi- dence that it was unconscientious or unreason- able, a court of equity will enforce." Brooks V. Morehouse, 3 Banning & Arden, 229. — Shbp- LBY, 1878. 44. A court of equity will not ordinarily " en- tertain jurisdiction of a matter which a person has had an opportunity of litigating in another court, and which had there been decided against him, unless it appears that circumstances be- yond his control prevented his making the de- fence or trying the question. " — lb. 45. Complainants' patent prior to suit had been in interference in the Patent OfBce, and the opposing party had prevailed. This was held not to estop complainants from proceed- ing. Perry et al. v. Starrett, 3 Banning & Arden, 485.— Wheeleu, 1878. 46. In prosecuting the extension of a patent, the patentee was required to disclaim several claims of the patent. After the extension he procured substantially the same claims by re- issue. The Supreme Court held these reissued claims invalid, and the patentee estopped by his disclaimer from securing these claims. Leggett et al. v. Avery et al., 101 U. S. 356.— Sup. Ct. 1879. 47. A license recited that " Whereas, letters- patent of the United States dated the 6th day of November, 1888, numbered 59,375, -wexalawfully granted," etc. Then, after authorizing the li- censors to I'evoke the license upon non-payment of the royalty, the license provided that such revocation should not impair " the effect of the admission of the validity of said letters-patent or reissue, or of the novelty, utility, and practi- cability of the said invention. " It was held that the licensee had admitted the validity of the li- censed patent, and that unless the recitals were introduced by fraud, imposition, mistake, or accident, the licensee could not deny their truth in an action for license fees which had accrued before the revooatioti of the license. Ewry et al. V. Oandee et al., 17 Blatch. 200. — Shipman, 1879. 48. A patentee who holds out to the world that, whoever buys a structure for putting his improvement in practice from another party shall have a right to practise the improvement, is estopped from proceeding against such purchas- ers as infringers. Downton v. Taeger Milling Go., 3 McCrary, 414.— Dillon, 1879. 49. As to when a licensee may and when he may not defend against a suit for compensation for the use of a patent, on the ground of the in- validity of the patent, see — . Morse Anns ^'fff Go. V. United States, 16 Nott & Hopkins' C. C. 296.— Davis, 1880. 50. It seems that acquiescence by a patent owner in the embodiment of the invention in a machine estops him from claiming the use of the machine to be wrongful. Downton^. Taeger Milling Co., 1 McCrary, 36.— Tkbat, 1880.. 51. An inventor and patentee who has been worsted in an interference on his patent is not, in the absence of bad faith on his part, estopped by his patent or by the interference from contest- ing the novelty of the patented invention. Green- wood V. Braeher, 1 Fed. Rep. 856. — Nixon, 1880. 53. "Webb's application for patent on coffee mill was put into interference with Shepard's application, and priority was awarded to Shep- ard, whereupon Webb disclaimed the improve- ment in issue and took a patent for another claim. Shepard assigned his patent to com- plainant. Webb had assigned to Landers, Prary & Clark. The judge said: "The com- plainant's counsel contend that the defendants, who are the vendees of Landers, Prary & Clark, are privies to the interference and bound by the adjudication. . . To this proposition I assent so far as the question of priority of invention is concerned. But. the decision does not preclude the defendants from contesting the right of the complainant" on the ground of lack of novelty. Peck, Stowe & Wilcox Go. v. Lindsay et al., 2 Ped. Rep. 688.— Achbson, 1880. 53. A license taken by defendant, giving it permission to sell goods on hand when the patent issued, is " rather in the nature of a com- promise to save trouble than a deliberate ac- knowledgment of the validity of the patent." White V. Harris & Sons M'fg Go., 3 Ped. Rep. 161.— Lowell, 1880. 54. By the court : " Upon a motion like the present, when the defendant is the original in- ventor of the plaintiff's machine, upon whose application the patent was issued, and when the patent was sold to the plaintiff under the cir- cumstances stated in the moving papers, no in- justice will be done by refusing to permit the defendant to be heard to dispute the novelty or utility of the invention described in the patent." Onderdonk v. Fanning et al. , 4 Ped. Rep. 148. -Benedict, 1880. 55. In an infringement suit an issue was priority of invention. The victor afterward brought suit to have the opposing patent can- celled, and put in evidence the record in the in- fringement suit. It was held that such record was proper evidence, and concluded the defend- ant on the question of priority of invention. U. 8. & Foreign Salamander Felting Go. v. As- ESTOPPEL. 283 bestos Felting Co., ISBlatch. 312. — Blatchford, 1880. 56. After the defendants have submitted to a decree pro confesso they cannot, in a second suit oa the patent, attack the validity of the patent. Boemer v. Newman et al., 19 Fed. Rep. 98. — Nixon, 1880. 57. When infringing defendants are licensees, and in the license are estopped from setting up the defences relied upon, provisional injunc- tion will issue. McKay, Trustee, v. McKnight et al., 5 Fed. Rep. 593.— Nixon, 1881. 58. Where a wife sees her husband apply for patent on an improvement, and sees him nego- tiate with others as to the patent, all without ob- jection, a patent issued to her subsequently for the same improvement is void. Her conduct created an estoppel. National Featlier Duster Co. V. Hibbard, 11 Bissell, 76.— Blodgbtt, 1881. 59. A claim made in an application for a pat- ent was rejected by the primary examiner, but allowed by the examiners-in-chief. On request of the primary examiner, applicant filed a new application with two claims. There was noth- ing in this state of facts estopping the patentee from setting up the claim afterward obtained in a reissue. Tale Lock M'fg Co. et al. v. Nor- loieh Nat. Bank, 19 Blatch. 133. — Shipman, 1881. 60. Where parties combine to defend a suit for infringement of patent brought against one of their number, and contribute to the expenses of that defence, they are all bound by the de- ' cision of that suit. Miller et al. v. Liggett & Myer Tobacco Co., 2 McCrary, 875.— McChakt, 1881. 61. " No one can doubt that if a patentee obtains a patent on his solemn admission of cer- tain facts, he shall never after be permitted to controvert them. This is Leggett v. Avery." Union Mt. Cartridge Co. v. TI. S. Cartridge Co., 7 Fed. Rep. 344.— Lowell, 1881. 62. In his reissue application a patentee in- serted a description of a modified form of his machine not found in the original patent. The court required him to disclaim this part of his description as a condition precedent to granting the reissue. This action was held not to be an estoppel preventing complainant from proceed- ing against one who used such modified form of the machine. — lb. 63. The mere taking of a license under a pat- ent, there being no covenants, etc. , as to valid- ity of the patent, does not estop the licensee from denying the validity of the patent in a suit against the licensee.— -Z\7a!«. M'fS Go. v. " 7 Fed. Rep. 355,— Ibving, 1881. 64. By the court : " It is explicitly stated in the specification that both the processes which the plaintiff has united in a single process arc old ; and this must mean old at the date of his invention. He cannot now be heard to contra- dict this admission." Moffitt v. Rogers et al., 8 Fed. Rep. 147.— Lowell, 1881. 65. A party who settles an infringement mat- ter by selling his patents to the complainant cannot afterward be allowed — no new facts ap- pearing — to dispute the validity of the patents so sold. Consolidated Middlings Purifier Co. v. Guilder, 3 McCrary, 186.— Nelson, 1881. 66. The fact that defendants formerly had a license from complainant under his patent, and put the patent stamp on their goods, does not estop them from contesting the patent, or the question of infringement. Blatherwick v. Carey et al., 10 Bissell, 494.— Blodgett, 1881. 67. By the court : " This patentee had no right, after having stated positively to the world and to the Patent Office that he did not claim the idea of mounting the rake-head upon the top of the carriage, by a reissue to claim this as an clement of invention by himself. ' ' Edgarton et al. V. Furst & Bradley M'fg Co. et al., 10 Bissell, 403.— Blodgbtt, 1881, 68. By the court : " It has been several times decided by the Supreme Court that disclaimers, qualifications, and limitations imposed upon a patentee by the Patent Office are forever bind- ing upon him if he chooses to accept a patent containing them. Not only are third persons likely to be misled to their injury by any sub- sequent enlargement by reissue or by a broad construction of claims thus intended to be limit- ed, but these qualifications are conditions prec- edent without which there would have been no grant at all, and, of course, the grant must be taken as it is given.'" N. T. Belting & Packing Co. et al. V. Sibley, 15 Fed. Rep, 386.— Lowell, 1883. 69. Where amendments made to claims in the Patent Office are simply for the purpose of cur- ing crude and inartificial language, such amend- ments do not operate as estoppels. Aram et al. V. Maline Wagon Co., 16 Fed. Rep, 336,— Blod- gett, 1883, 70. By the court : " While the defeated party to an interference is not estopped in another ac- tion from raising the question of want of novelty in the invention, yet if he had knowledge of the condition of the art at the time of his application, which the testimony here discloses, a want of novelty in the invention must be clearly appar- ent or a preliminary injunction will be granted. ... In such a case it has been held that where 384 ESTOPPEL. there is a want of good faith, the court will grant injunction." Smith v. Halkyard et al. , 23 O. Gr. 1833.— Colt, 1883. 71. What is called equitable estoppel — that is, estopped by contract— is, in this country at least, as valid a defence at law as in equity. Concord V. Norton et al., 16 Fed. Rep. 477.— Lowell, 1883. 73. Complainant notified defendants that de- fendants were infringing complainant's patent, and made threat of suit on thirty days' grace. Defendants answered that they should test the validity of the patent. Some years afterward complainant brought suit. This delay of com- plainant's was held not to amount to an estoppel. —n. 78. By the court : ' ' The more commonly ex- pressed and therefore presumably better judicial opinion is to the effect that, when the license has been revoked by the plaintiff and the bill treats the defendant as a naked infringer, he is at lib- erty to avail himself of any defence ordinarily open to any defendant who is charged with in- fringement." Wooster v. Singer M'f'g Co., 33 O. G. 3513.— Shipman, 1883. ' 74 By the court : " The question of priority having been determined in favor of complain- ants, in that proceeding (a Patent Office inter- ference) it is res adjudicata as between the parties to it." Defence of want of novelty is still open to defendants. ShuUr et al. v. Dams etal., 16 Fed. Bep. 564.— Wallacb, 1883. 75. Where a patentee modifies his claim at the instance of the Patent Office, he is bound by such action, and estopped from claiming to the contrary thereafter. Dodds v. Stoddard et al. , 24 O. G. 799.— Sage, 1883. 76. Where defendants, in a written agreement between the parties, have admitted the validity of complainant's patent, they are estopped from denying that validity. Eclipse Windmill Co. v. Mayet al., 17 Fed. Rep. 344.— Blodgbtt, 1883. 77. One Curran took patents for improve- ments in lumber-driers, and conveyed the same to defendant for the State of Wisconsin. Cur- ran and the other complainants subsequently bought patents covering the lumber-driers which defendant properly made under Ihe Curran pat- ents, and brought suit against defendant for in- fringement of these patents last acquired by Curran and the other complainants. It was held that Curran 's assignment of his own patent to defendant estopped him from claiming that de- fendant's devices were infringements of the later- acquired patents, and also served as a license under the later-acquired patents. Oiin-an et al. T. Burdsall, 27 0. G. 1319.— Blodgbtt, 1883. 78. "A patentee cannot sell his rights to an- other and then buy or obtain control of an older patent, and through such older patent dispossess his assign of the full benefit of what he has pur- chased. "— /J. 79. Where the grantee of a patent sues the patentee for infringement, " it would probably not lie in the mouth of . . . the defendant, who was the original patentee, . . to deny their validity. ' ' Burdsall v. Curran et al. , 27 O. G. 1320.— Blodgbtt, 1883. 80. " In order to constitute the former judg- ment or decree a bar, it must appear that the point in issue was judicially determined after a hearing, and upon consideration of the merits." Keller et al. v. Stolzenbach et al., 27 O. G. 309. — AcHBSON, 1884. 81. Complainants sued defendant under a pat- ent granted for the invention of one Clark. De- fendant had previously prevailed, upon his own patent, in a suit against one King, in which suit defendant's patent had been held valid as against the prior Clark patent. The present com- plainants were King's principal witnesses, and purchased the present patent in suit from King. Present complainants held to be in privity with King, and estopped from prosecuting the pres- ent case by the proceedings in the former case. Pennington et al. v. Sunt, 20 Fed. Rep. 195.— Nixon, 1884. 83. Where complainants bring suit for in- fringement of a patent owned by them, and de- fendant shows that he is operating under a prior patent conveyed to him by one or more of the complainants, the latter — at Igast those concerned in selling the prior patent to defendant — are estopped from claiming that defendant infringes the patent in suit, and the bill must be dismissed. Rumsey et al. v. Buck, 30 Fed. Rep. 697.— Treat, 1884. 83. Complainant contended that defendant was estopped from contesting the validity of complainant's patent, because the maker of the articles used by defendant had confessed and ac- knowledged the validity of complainant's pat- ents in a license. It seems that, in order to make such a contention available, it must be suggested in the bill of complaint, and that it must be shown that respondent wfis a party to .such a written agreement. Baltimore Car Wheel Co. V. North Baltimore Passenger Railway Co., 31 Fed. Rep. 47.— Morris, 1884. 84. Where a complainant sues its licensee as an infringer, defendant is not estopped from denying the validity of the patent by recitals in the license. — lb. 85. By the court : " An estoppel cannot arise ESTOPPEL. 285 unless it grows out of a transaction to which the person estopped is a party or privy, and I do not understand that one who may purchase from a licensee of the patentee can, from that fact alone, be held bound by the license or its recitals, or that it establishes any contractual relations between such a purchaser and the patentee " —lb. 86. Where complainant, in procuring a pat- ent, describes a certain feature in the original specification, but afterward erases it therefrom, " such omission must be held to be either an abandonment of its use to the public or an ir- revocable declaration" that such omitted thing was not the patentee's invention. Atlantic Oiant Powder Co. v. HuUngs, 31 Fed. Rep. 519. — AcHBSON, 1884. 87. Where a person sells a patent to another, he will not afterward be permitted to deny the validity of that patent. Underwood v. Warren etal., 31 Fed. Rep. 573.— Tbeat, 1884. 88. It is no longer open to doubt that a li- censee, holding under a license containing ac- knowledgments of the validity of complainant's patent and the like, is estopped from denying the validity . of the patent ; and it is about as well settled that so long as defendant continues to manufacture and sell during the life of the license, defendant must pay royalties. Wasli- Uim & Moen M'fg Co. v. Cincinnati Barbed Wire Fence Co., 23 Fed. Rep. 713.— Sage, 1884. 89. Defendants, while in complainant's em- ploy, took a patent on electric clocks and as- signed same to complainant. A modification of such clock was made while in complainant's em- ploy, and represented by them to be within the patent. After leaving the employ they attempted to make and sell a particular kind of clock, and the court granted a provisional injunction, not- withstanding the patent was recent and had never been litigated. Defendants held to be estopped from denying validity and infringe- ment. Time Tel. Co. v. Carey et al., 33 Blatch. 34.— Wallace, 1884. 90. " After an extension has been obtained on the condition precedent of making . . . dis- claimer, the disclaimer cannot be held inopera- tive as respects the extended term." Union MetaZKc Cartridge Co. v. U. S. Cartridge Co., 113 U. S. 634.-SUP. Ct. 1884. 91. A disclaimer is operative as to recoveries both before and after it is filed. — lb. 93. A Patent Office adjudication, in an inter- ference proceeding, " is a sufficient adjudication upon the patentability of the invention and the right of the successful party to a patent for it, to lay the foundation for a preliminary injunc- tion against the losing parties and privies to pre- vent infringement of the patent ; and neither al- leged anticipation of the invention by others known to them while they were seeking to ob- tain a patent for it themselves, nor Iheir own, will avail them to prevent the injunction." Celluloid M'fg Co. et al. v. Chrolithion Collar & Cuff Co. et al. , 33 O. G. 383.— Wheeler, 1885. 93. It is admitted that he who assigns away a patent for a valuable consideration is estopped from denying the validity of that patent ; and, in absence of contrary facts shown, the presump- tion is that the conveyance was for a considera- tion. Parker, Trustee, v. McKee etal., 33 0. G. 137.— Wheeler, 1885. 94. There is nothing in the action of the Com- missioner of Patents in rejecting an application which operates as an estoppel, or is re» adjudicata upon the patentee, in the absence of the paten- tee's acquiescence in such rejection. Mattliews etal. V. Flower etal., 33 0. G. 887.— Brown, 1885. 95. For one inventor and applicant to ask an- other patentee Lo disclaim in favor of the former does not create an estoppel as against the former. —lb. 96. Where a patentee is forced by the proceed- ings in the Patent Office to take a limited claim, he cannot afterward have that claim construed more liberally than its terms. PJicenix Castor Go. V. Spiegel, 36 Fed. Rep. 373.— Woods, 1886. 97. " Where an applicant, to cover a new combination, is compelled, by the rejection of his application by the Patent Office, to narrow his claim by the introduction of a new element, he cannot broaden his claim by dropping the ele- ment which he was compelled to include in order to secure his patent. ' ' Shepard et al. v. Carrigan, 116 U. S. R. 593. -S0P. Ct. 1886. 98. "If an applicant, in order to get his pat- ent, accepts one with a narrower claim than that contained in his original application, he is bound by it. If dissatisfied with the decision rejecting his application, he should pursue his remedy by appeal." — lb. 99. Complainant brought suit in one of the circuits against defendant. Defendant suffered a decree pro confesso, and a perpetual injunction was issued and served. Complainant afterward brought suit upon the same patent in another circuit for subsequent infringements. Com- plainant desired to have the former decree made an estoppel. The court held that it was not an estoppel, saying that the former decree was in- terlocutory in form, that its estoppel nature was doubtful, and that such doubts are to be resolved against him in whose favor the estoppel makes. 286 ESTOPPEL. Boemer v. Newman, 26 Fed. Rep. 333.— Coxe, 1886. 100. " When a claim has been examined and rejected by the Commissioner, the rejection ac- quiesced in by the patentee or his solicitor, and the patent issued without the claim, there is no ■ inadvertence, accident, or mistake which entitles the patentee to a reissue." Boland\. Tliomp- son, 38 Blatch. 440.— Coxk, 1886. 101. " There is no fair question but that a li- censee under a patent is estopped to deny its validity on any question arising out of that re- lation between the parties. ... It does not fol- low that he will be always estopped because he has stood in the relation. When he stands out from under the license, and claims nothing from it, and does nothing more under it, with full knowledge to the licensor of his position, he would appear to be at as full liberty to contest the patent as anyone." Brown v. Lapham et al., 28 Blatch. 475.— Wheblbk, 1886. 102. Where an applicant for a patent, being rejected upon a prior rejected application, ac- quiesces in the rejection, he is estopped thereby, and his patent is to be construed thereby. Blades V. Band, McNally & Co., 27 Fed. Rep. 93.— Blodgett, 1886. 103. Where a iDarty takes a license in which he agrees to the validity of the patents, he is estopped from denying their validity so long as the license is in force. Bope M'fg Co. v. Ows- ley, 27 Fed. Rep. 100.— Blodgbtt, 1886. 104. In an equity action for infringement, de- fendant's pleas set out that at a former time, in an action between the assignors of the present complainant and this present defendant, a de- cree was entered dismissing the bill on the merits, and defendant contended that this was an ad- judication and estoppel against the present bill. Complainant in the present bill set up its patent and alleged that the present defendant had been making articles which were infringe- ments of its patent. The court held the former action not to be an estoppel, because it was not certain, and because the decision in the former case might have gone upon the ground that the prior defendant was making none of the arti- cles patented. Steam . Gauge & Lantern Co. v. Meyrose, 27 Fed. Rep. 213.— Brown, 1886. 105. A defendant who is complainant's as- signor is estopped from denying the validity of complainant's patent. Alabastine Co. v. Bayne, 37 Fed. Rep. 559. -Coxe, 1886. 106. Where defendants are owners of territory under the patent in suit, have done a good busi- ness under it, and represent the patent as valid, they may not be estopped from denying its validity ; but that defence comes from them with a very poor grace. Bobbie et al. v. Smith et al., 37 Fed. Rep. 656.— Coxe, 1886. 107. A suit was brought by the Am. Bell Telephone Co. et al., in the Circuit Court for the Eastern District of Louisiana, against the N. I. Telephone Co. et al., for infringemeht of the Bell Telephone patent. The Bell Telephone Co. had previously sued licensees of the N. I. Telephone Co. in the Circuit Court for the West- ern District of Pennsylvania ; the N. I. Tele- phone Co. assumed and conducted all the de- fence, but at a certain point abandoned ,the defence. The N. I. Telephone Co. was held bound and estopped by the decree in the Penn- sylvania District. Am. B. Telephone Co. et al. V. N. I. Telephone Co. et al., 27 Fed. Rep. 663 ; per curiam, 1886. 108. Two joint patentees gave to their selling agent a paper not intended to be an assignment, but possibly capable of that construction. A defendant, who was sued, took the conveyance of the agent's rights after suit brought. Com- plainants were held not to be estopped from showing the true nature of the paper. Kearney et al. V. Lehigh Valley B. B. Co., 27 Fed. Rep. 699.— Nixon, 1886. 109. Patentees are bound by concessions and amendments which they make in their applica- tions for patents. Boemer v. Beddie et al., 27 Fed. Rep. 702.— Wheeler, 1886. 110. An inventor who has assigned his patent to complainant is estopped from claiming that he was not the first inventor. Am. Baper Bar- rel Co. V. Laraway, 28 Fed. Rep. 141 —Ship- man, 1886. 111. " The case would be an exceptional one where a party who has prevailed upon One is- sue or defence in a litigation is estopped from setting up a different defence in a subsequent suit brought by his adversary. Such a case might exist where the defence in the second suit is so inconsistent with that asserted in the first that both could not be true, or where the de- fence in the first suit was of a character to in- duce the plaintiff to change his ground of action, and bring a second suit." Holliday et al. v. Bickhard et al., 29 Fed. Rep. 858. -Wallace, 1887. 112. " It is not true, as a general proposition, that a party, by putting forward one defence in a litigation, is precluded from asserting another against his adversary in a subsequent suit be- tween them ; nor can the general proposition be maintained that a contest in the Patent Office upon the question of priority of invention will forever foreclose the defeated applicant for a EVIDENCE. 287 patent from assailing the validity of the patent upon other grounds." — /*. 113. By the court : " The only claim in the reissue is for a combination not claimed in or covered by the original patent, and hence is not for the same invention described in the latter. Can this defect be corrected by a reissue ? The claim in the reissue was before the Commis- sioner, and its allowance urged by the patentee through his solicitor, but was not allowed, being omitted at his instance, and it was thereupon stricken out by the Commissioner. The patent was issued without this claim, and was accepted in this form ; but a week or two after its issue, was surrendered by the patentee and a reissue asked for, which was ultimately granted in its present form. Under these circumstances, we regard this case as clearly within the case of Ligget v. Avery, 101 U. S. 256." Damson v. Lees, 30 Fed. Rep. 635, per curiam, 1887. 114. One Currau was a patentee. One Bird- sail owned an undivided half under the original patent for the State of Wisconsin. Then Curran took a reissue, and afterward Birdsall acquired the other half of the patent for Wisconsin. Birdsall sued Curran as an infringer. It was held that Curran was estopped from denying the validity of the patent. Birdsall v. Curran et al., 31 Fed. Rep. 918.— Blodgett, 1887. 115. Defendant sought to have complainant estopped by reason of the proceedings in the Patent Office pending the application for the patent in suit. Complainant's expert testified without objection that he was familiar with the history of the original patent, that the Patent Office requested a selection to be made from the two claims of the application, because they stated precisely the same invention, and such selection was made. The court held that there was no estoppel. Ewart M 'fg Co. v. Bridgeport Malle- able Iron Co., 31 Fed. Rep. 149.— Shipmast, 1887. 116. In an application for a patent a corre- spondence between the Otfice and the applicant, which does not eventuate in any moditication of complainant's claims, does not amount to an estoppel. Wirt v. Brown. 33 Fed. Rep. 283.— Benedict, 1887. EVIDENCE. "Evidence" in the Patent Acts. Act approved April 10th, 1790. Section 2. (Provides as to specifications of patents that "certified copies thereof shall be competent evidence in all courts, and before all jurisdictions, where any matter or thing touch- ing or concerning such patent, right, or privi- lege shall come in question.") Sec. 6. (Provides that " patents or specifica- tions shall be prima facie evidence that the said patentee or patentees was or wctc the first and true inventor or inventors, discoverer or discov- erers, of the things so specified, and that the same is truly specified ; . . .") [Repealed Feb- ruary 31st, 1793.] Act approved February 31st, 1793. Sec. 3. (Provides as to patents that " certified copies thereof shall be competent evidence in all courts where any matter or thing touching said patent right shall come in question. ") [Re- pealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 4. And be it further enacted, Tliat the said Commissioner shall cause a seal to be made and provided for the said office, with such de- vice as the President of the United States shall approve ; and copies of any records, books, pa- pers, or drawings belonging to the said oflice, under the signature of the said Commissioner, or when the office shall be vacant under the signature of the chief clerk, with the said seal affixed, shall be competent evidence in all cases in which the original records, books, papers, or drawings could be evidence. And any person making application therefor may have certified copies of the records, drawings, and other pa- pers deposited in said office, on paying for the written copies under the sum of ten cents for every page of one hundred words, and for copies of drawings the reasonable cost of making the same. [Repealed July 8th, 1870.] Act approved March 3d, 1837. (This act provides for renewing and replacing papers ■ and models destroyed in the fire which burned the Patent Office, December 15th, 1836.) Act approved March 2d, 1861. Sec. 15. And be it further enacted, That print- ed copies of the letters -patent of the United States, with the seal of the Patent Office affixed thereto, and certified and signed by the Commis- sioner of Patents, shall be legal evidence of the contents of said letters-patent in all cases. [Re- pealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 13. And be it further enacted. That the Commissioner shall cause a seal to be provided for said office, with such device as the President may approve, with which all records of papers issued from said office, to be used in evidence, shall be authenticated. Sec. 57. And be it further enacted, That writ- ten or printed copies of any records, books, or 288 EVIDENCE. drawings belonging to the Patent Office, and of letters-patent under the signature of the Com- missioner or acting Commissioner, with the seal of the office affixed, shall be competent evidence in all cases wherein the originals could be evi- dence, and any person making application tlierefor, and paying the fee required by law, shall have certified copies thereof. And copies of the specifications and drawings of foreign letters-patent, certified in like manner, shall be prima facie evidence of the fact of the granting of such foreign letters-patent, and of the date and contents thereof. [Repealed June 22d, 1874.] Act approved June 23d, 1874. Sec. 478. The seal heretofore provided for the Patent Office shall be the seal of the office, with w^hich letters-patent shall be authenticated. Sec. 490. The Commissioner of Patents is authorized to have printed, from time to time, for gratuitous distribution, not to exceed one hundred and fifty copies of the complete specifi- cations and drawings of each patent hereafter ■ issu,ed, together with suitable indexes, one copy to be placed for free public inspection in each capitol of each State and Territory, one for the like purpose in the clerk's office of the district court of each judicial district of the United States, except when such offices are located in State or Territorial capitols, and one in the Li- brary of Congress, which copies shall be certi- fied under the hand of the Commissioner and seal of the Patent Office, and shall not be taken from the depositories for any other purpose than to be used as evidence. Sec. 491. The Commissioner of Patents is authorized to have printed such additional num- bers of copies of specifications and drawings certified as provided in the preceding section, at a price not to exceed the contract price for such drawings, for sale, as may be warranted by the actual demand for the same ; and he is also authorized to furnish a complete set of such specifications and drawings to any public library which will pay for binding the same into vol- umes to correspond with those in the Patent Office, and for the transportation of the same, and which shall also provide for proper custody for the same, with convenient access for the public thereto, under such regulations as the Commissioner shall deem reasonable. Sec. 893. "Written or printed copies of any records, books, papers, or drawings belonging to the Patent Office, and of letters-patent au- thenticated by the seal, and certified by the Com- missioner or acting Commissioner thereof, shall be evidence in all cases wherein the originals could be evidence ; and any person making ap- plication therefor, and paying the fees required by law, shall have certified copies thereof. Sec. 893. Copies of the specifications and drawings of foreign letters-pat«nt, certified as provided in the preceding section, shall be prima facie evidence, and of the date and contents thereof. Sec. 894. The printed copies of the specifica- tions and drawings of patents, which the Com- missioner of Patents is authorized to print for gratuitous distribution, and to deposit in the capitols of the States and Territories, and in the clerk's offices of the district courts, shall, when certified by him, and authenticated by the seal of his office, be received in all courts as evidences of all matters therein contained. Cases. 1. A witness cannot be examined as to a third I machine, in order to test the correctness of his j testimony as to the similarity or dissimilarity of the machines of the plaintiff and defendant. Odiorne v. Winkley, 3 Gall. 51. — Story, 1814. 2. It is a presumption of law that where a pat- ent has been obtained, every subsequent paten- tee of a similar machine has knowledge thereof. —lb. 3. It is a presumption of fact that every pat- entee ascertains whether any one else has ac- quired the prior right. — lb. 4. The purchase of a license under plaintiff's patent proves nothing relative to the issue of disputed novelty. Evidence rejected. Evans v. Eaton, 1 Peters's C. C. 322.— Wash. 1816. 5. In the proceeding for repeal of patent — authorized by Section 10, Chapter 11, Act ap- proved February 21st, 1793 -the burden of proof is on the plaintiff. Stearns v. Barrett', 1 Mason, 153.— Story, 1816. 6. Whether the objection of want of utility can be put in evidence under the general issue may well be doubted. Oray et al. v. James et al., 1 Peters's C. C. 394.— Wash. 1817. 7. A patent is to be considered merely prima facie evidence of a very slight nature as to nov- elty and utility. (The law at this time required no examination on these points in granting a patent.) Lowell v. Lewis, 1 Mason, 183. — Story, 1817. 8. Certified copies of the patentee's letters to the patent-granting authority, containing appli- cation and specifications, are admissible in evi- dence. Pettibone v. Derringer, 4 Wash. 215. — Wash. 1818. 9. Testimony as to when inventor made dec- laration to witness, of having made the inven- EVIDENCE. 389 tion, is admissible; tliis in plaintiff's behalf. EMm V. Hettick, 3 Wash. 408.— Wash. 1818. 10. That a witness, for defendant, is a con- tributor to a common fund for paying witness's expenses, does not disqualify him. Neither is he disqualified because he uses a machine like de- fendant's. — lb. 11. A witness cannot be asked whether an- other party — apparently adversely interested — offered to take a license, until the party is shown to have some machine for the purpose in ques- tion. — lb. 13. A deposition cannot be rejected after it is once read without objection. — lb. 13. A witness for defendant is not incapaci- tated because he uses one of the alleged infring- ing machines. Ecans v. Eaton, 3 Wash. 443. — Wash. 1818. 14. The opinion of skilful witnesses whether the principles of two machines are the same, is competent evidence. Barrett et al. v. Hall et al., 1 Mason, 447.— Story, 1818. 15. The testimony of experts is but matter of opinion, " and its weight must be judged by all the other circumstances of the case." — lb. 16. Evidence that alleged prior users had taken licenses from the plaintiff is admissible in plaintiff's behalf. Evans v. Eaton, 3 Wheat. 454.— Sup. Ct. 1818. 17. Under a plea of general issue, without notice of special matter, defendant may give the patent act in evidence, also alienage, also a license, also that the patent has no specification, also that the specification is insufficient in de- scription, also that the patent covers more than the invention, also that the invention is not de- fined and pointed out, also that the suggestions of the petition are not recited in the patent, but not the defences enumerated in Section 6 of the act. (Referring to the act of February 21st, 1793.) Kneass v. ScJiuylkill Bank, 4 Wash. 9. —Wash. 1820. 18. It is incumbent on the plaintiff to prove infringement when the plea denies it. Dixon v. Mayer, 4 Wash. 68.— Wash. 1821. 19. The testimony of persons conversant with the art as to resemblances or differences is enti- tled to great, but not conclusive, weight. — lb. 20. It is perfectly clear that a person having an interest only in the question, and not in the event of the suit^though liable to a like action — is a competent witness. Evans v. Eaton, 7 Wheat. 356.— Sup. Ct. 1823. 31. The verdict in a suit against one party cannot be given in evidence in suit against an- other party. The other party " would be en- titled to contest every step in the cause." — lb. 33. A deposition taken under state practice, but not under " positive rules of law or the rules of the Circuit Court," is objectionable. —lb. 23. A witness is not disqualified because he is sued for infringement of the same patent. Ecans v. Hettiek, 7 Wheat. 453. -Sup. Ct. 1822. 24. A witness cannot be asked whether an- other party, apparently interested adversely to the plaintiff, took a license from plaintiff.— i 6. 25. An objectionable deposition allowed to bo read without objection, cannot afterward be thrown out — lb. 36. That a person is subject to fits or derange- ment does not disqualify him from testifying. A question put to another witness as to such de- rangement was properly ruled out.- — lb. 37. A patent is prima facie evidence, and no more, of the right of the patentee to the subject patented. Pennock- et al. v. Dialogue, 4 Wash. 538.— Wash. 1825. 38. Testimony that plaintiffs at a certain time made a specimen of the afterward patented thing, the like of which witness had never known of, is evidence toward establishing in- vention by plaintiffs at that time. — lb. 39. A rival patentee is an admissible witness for the defence to show prior use. His interest is in the question merely, not in the event of the suit. Treadwell et al. v. Bladen, 4 Wash. 703. —Wash. 1837. 30. Upon no question do experts disagree oftener than on the question as to whether a difference is in form or in principle. — lb. 31. Upon an exception to the charge of the court the evidence forms no proper part of the record. Pennock et al. v. Dialogue, 3 Peters's C. C. 1.— Sup. Ct. 1829. 33. Defendant is not entitled to put in affi- davits in answer to plaintiff's rebuttal affidavits. Ames V. Howard, 1 Sumner, 483. — Stokt, 1833. 33. " The burden of proving the previous in- vention, knowledge, or use of the thing patented, is on the defendants." Whitney et al. v. E',n- met et al., 1 Bald. 303.— Hopkinson and Bald- wrN, 1831. 34. An exemplified copy of a patent is admis- sible in evidence. Peck v. Warrington, 9 Wend- N. Y. 44.— Savage, 1833. 35. The jury are to judge from the models and from the evidence whether the two machines differ in principle. " Nothing is more common than for persons skilled in the structure of ma- chines to disagree in regard to the principles of them." Smith v. Pearce et al., 3 McLean, 176. — McLban, 1840. 36. Evidence that the defendants' structure 290 EVIDENCE. is better than the plaintiffs', is inadmissible, and not to be considered except so far as it goes to show substantial difference. Ald^n et al. v. Bewey et al., 1 Story, 336.— Story, 1840. 37. The patentee's oath of invention counter- balances the oath of a single witness that he com- municated the invention to the patentee. — Ih. 38. The patent is prima facie eyi&encs of nov- elty and utility. — lb. 39. Where a defendant would show prior use in evidence, he must, in pleading, set up the •witnesses having knowledge. Philadelphia & Trenton Bailroad Go. v. Stimpson, 14 Peters's C. C. 448.— Sup. Ct. 1840. 40. A patent is granted upon evidence, and proofs laid before a public officer upon which he decides, and the grant of the patent is prima facie evidence that the proofs have been regu- larly made and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs. It is not neces- sary for the patent to contain any recitals that the prerequisites to the grant have been duly complied with,^ — lb. 41. In a. suit at law fpr infringement of a pat- ent, the plaintiff is confined to giving evidence of the making, constructing, or using the inven- tion in violation of his patent right. Eastman V. Bodfish, 1 Story, 528.— Story, 1841. 42. " It is incumbent on those who seek to show that the CKamination of a witness has been im properly rejected to establish their right to have the evidence admitted." Philadelphia & Tren- ton R. B. Go. V. Stimpson, 14 Peters's C. C. 448. —Sup. Ct. 1840. 43. "It is incumbent upon those who insist upon the right to put . . . questions to a wit- ness to establish that right beyond any reason- able doubt, for the very purpose stated by them ; and they are not afterward at liberty to desert that purpose, and to sliow the pertinency or relevancy of the evidence for any other purpose not then suggested." — lb. 44. " A party has no right to cross-examine any witness except as to the facts and circum- stances connected with his direct examination. If he wishes to examine him to other matters he must do so by making the witness his own, and calling him as such in the subsequent progress of the cause." — lb. 45. "Parol evidence, bearing upon written contracts and papers, ought not to be admitted without the production of such written contracts or papers." — Ih. 46. The declarations of an inventor, giving description and details of his invention, are ad- missible in evidence. — lb. 47. The circuit courts are vested with large discretion in the regulation of their practice, in- cluding the admission or exclusion of evidence, and where they act within their discretion that decision is not reviewable in the Supreme Court. —lb. 48. The burden is upon the plaintiffs to show an infringement of their rights. Washburn et al. v. Qould, 3 Story, 133. -Story, 1844. 49. " It is one of the rules in law that no man can be a witness in his own cause, unless com- petent by statute, or by being called upon by the opposing party to answer upon oath, as in cases in equity and admiralty jurisdiction, etc." Arnold v. Bishop etal., 1 MacArthur's P. C. 27. — Cranch, 1841. 50. Certified copies of patents, and parts of patents, are admissible in evidence. Brooks et al. V. Jenkins et al., 3 McLean, 432. — McLean, 1844. 51. Certified copies of recorded assignments are admissible in evidence. — lb. 52. Where a rule of court requires that an ob- jection to a deposition shall be indorsed thereon before the beginning of the trial, and if the rule is not complied with, the depositions will be re ' ceived in evidence, — lb. 53. Where a previous owner in a patent has assigned away that interest, he has no interest in the case that can affect his competency as a witness. — Jb. 54. "Great respect is due to the opinions of professional men on matters which relate to their professions. On such subjects, and such sub- jects only, are the opinions of witnesses received as evidence. This rule applies as strongly to mechanics as to any other profession or busi- ness. " — lb. 55. Doubts as to whether a prior patent exhib- its the device of the patent in suit, are fatal to the defence on that point. — lb. 56. Doubts upon the question of infringement are to be decided in favor of the defendants. —lb. 57. The record of a suit in equity between the same parties in another circuit court, wherein the court had directed an issue upon the same points now in controversy, and the jury had found a verdict upon these points in favor of defendants, but no other proceedings were had upon the verdict, and no hearing was had upon the merits of the case by the court, and the plaintiff, by the leave of the court, was allowed to dismiss his own bill without any final hearing thereon, is not admissible in evidence. Allen v. Blunt et al., 3 Story. 742.— Story, 1845. 58. Artisans skilled in the trade to which the patented improvement appertains, are proper EVIDENCE. 391 witnesses upon the question whether a specifica- tion is sufficient to work by. Persons who, though not practical artisans, are thoroughly conversant witli the subject of mechanics, as a science, are proper expert witnesses. "The very highest witnesses to ascertain and verify the novelty of an invention, and their identity or diversity, or diversity of mechanical appa- ratus, and contrivances and equivalents, are be- yond all question, all other circumstances being equal, scientific mechanics." — lb. 59. A certified copy of a restored drawing, under the act of 1837, is admissible in evidencB. Emerson v. Hogg et al., 2 Blatch. 1. — Betts, 1845. 60. " There must be in the bill allegations broad enough to cover any evidence ofEcred be- fore it becomes admissiblei " Nesmitliet al. v. Caliiert et al. , 1 Woodbury & Minott, 34. — "Wood- bury, 1845. 61. Where a defendant's answer is under oath, and denies any novelty whatever in the patent, the affirmative, in order to be proved, requires the testimony of more than one witness. Hmey V. Stevens, 1 Woodbury & Minott, 390. — Wood- bury, 1846. 62. " Something more must be produced than the evidence of a single witness to overcome an answer under oath, and responsive to the bill. ' ' Woodworth et al. v. Hall et al. , 1 Woodbury & Minott, 248— Woodbury, 1846. 63. A copy of a patent certified by the Com- missioner is proper evidence of the original record. — lb. 64. Where a patent issues to an administra- tor, that is sufficient evidence of the grant of ad- ministration, and it is not competent for a court to furtlier inquire Into the matter.—/*. 65. Where there is no notice or plea authoriz- ing defendants to show a want of novelty in the invention, evidence given under that head will be disregarded. Boot v. Ball et al. , 4 McLean, 177.— McLean, 1846. ' 66. Query. Whether a letter from the Com- missioner of Patents aclinowledging the receipt of an application for a patent is or not evidence as to the making of such application ? Allen v. Blunt et al, 2 Woodbury & Minott, 131.— Woodbury, 1846. 67. Where a party claims notice given to an- other party by letter, the letter must be shown to have been received. — lb. 68. A former verdict in a prior suit between the same parties is not admissible in evidence, unless the case be prosecuted to judgment and decree. — lb. 69. " No presumptions are to be made in aid of evidence taken contrary to common law principles." A deposition taken during a ses- sion of the court, although at a distance of more than one hundred miles, wlietlier with or without notice, is inadmissible. — lb. 70. After a complainant has made out a prima facie case, the burden of proof is on the defend- ants to support the defence which they attempt to maintain. — lb. 71. At the trial of an infringement case based upon an original patent, the court cannot con- sider a new specification filed in the Patent Office preparatory to a reissue. Homy v. Stevens, 3 Woodbury & Minott, 17.— Woodbury, 1846. 71a. Where a defendant's answer is under oath, and denies any novelty whatever in the patent, the affirmative, in order to be proved, requires the testimony of more than one wit- ness. Hovey v. Stevens, 1 W. & M. 290.— Wood- bury,' 1846. 72. A patent is, prima facie, valid. Adamis et al. V. Edwards et al. , 1 Pish. P. C. 1.— Wood BURY, 1848. 73. It is for the defendants to make out their defence.— J6. 74. Parties are bound by admission of facts, unless made under a mistake, but not by admis- sion of law. — lb. 75. For a statement, at length, of the proced- ure and principles of taking testimony in equity cases, see — . Van Hook v. Pendleton et al., 2 Blatch. 85.— Bktts, 1848. 76. " It is an elementary doctrine in the prac- tice of all courts that parties shall take advantage of irregularities at the first opportunity after acquiring knowledge of them, or be deemed to have waived all objections to them. "— JJ. 77. Where a party has chosen not to cross- examine at a regular time, and in the regular way, he cannot afterward have the witness re- called for that purpose. — lb. 78. A person interested in a patent for a cer- tain territory, is a competent witness in a suit where that patent is in issue in some other ter- ritory. Buck et al. v. Hermance, 1 Blatch. 332. -Nelson, 1848. 79. A verdict in a patent suit is not admissible in evidence on a trial at law or in equity, on the merits, between different parties. — lb. 80. A verdict in a patent suit is admissible in evidence in a suit between different parties upon a patent, on a motion for provisional injunction. —lb. 81. A party who had an interest in a patent assigned that interest away, reserving to himself one manufacturing right thereafter to be lo- cated. In a suit on the patent, defendants sought 292 EVIDENCE. to prove, by the declarations of the party first mentioned, the worthlessness of the patented de- vice. The evidence was held inadmissible. Many v. Jagger et al., 1 Blatch. 372.— Nelson, 1848. 83. Defendants, in their notice of defences, had given notice of A as having had prior knowl- edge of the patented thing. They called B as a witness under this allegation. B was held ad- missible. — lb. 83. " The assignment of a patent in whole or in part is authorized by act of Congress, and it is required to be recorded in the Patent Office." After an assignment has been recorded a duly authenticated copy of it is ^lOTfls/iKje evidence at least. P(trker v. Haworth, 4 McLean, 370. — McLban, 1848. 84. " The patent itself is to be taken as prima facie evidence of the novelty and usefulness of the invention specified in it." WiUon v. Bar- num, 1 Wallace, .Jr 347.— Kane, 1849. 85. Tlie fact that a patent has for twenty years withstood the attacks upon it, is a strong proof of its genuineness. Parker v. Malme, 7 West. L. J. 417.— Kane, 1849. 86. Evidence as to occurrences of ancient date U always to be viewed with distrust, and this without in any manner- impeaching the credi bility of the witnesses. — lb. 87. Letters-patent are ^?na/acje evidence of their own novelty and utility. Many v. Sizer et . , 1 Bissell, 468.— Drummond, 1865. 174. "Letters-patent are granted by public authority, and when issued, and regular in form, the presumption is that the power was rightly exercised, and he who alleges the contrary must prove it-." Dental Vulcanite Oo. v. Wetherlee, 2 Clifford, 555.— Clippokd, 1866. 175. "Models are ofttimes the very test evi- dence that can be adduced. There is nothing, perhaps, more satisfactory upon questions in- volving the identity of several mechanical struc- tures than the exhibition of the machines or ac- curate models of them. They are silent wit- nesses, but they are usually very reliable." BlancMrd et al. v. Puttman et al., 2 Bond, 85. — Leavitt, 1867. 176. " The emanation of a patent from the proper authorities of the Government, affords a presumption that the invention patented is new, and original with the patentee. This presumption arises from the fact that all patents must be is- sued with certain formalities, and that the officers charged with the administration of the patent laws are required very astutely to investigate every claim. The applicant is, moreover, obliged to swear that he is the original inventor of that for which he asks a patent ; and it is only upon a compliance with these requisitions of law that the Commissioner of Patents is authorized to make the grant. "—J&. 177. Where defendants have a patent for the devices they tise, that creates a presumption that their device is different from the complainants' patented device. — lb. 178. " There is no kind of testimony that is more reliable in regard to the true character of a machine than an accurate model. It is a wit- ness that cannot lie. " Swift et al. v. WMsen et al., 2 Bond, 115.— Leavitt, 1867. 179. The evidence of lack of novelty "must be strong and conclusive to justify a judgment setting aside a patent for want of novelty." Ooodyear et al. v. HonMnger, 2 Bissell, 1. — Bkummond, 1867. 180. Evidence introduced for the purpose of showing the state of the art cannot, in the ab- sence of proper pleading, be used to antedate the patent in suit. Middletown Tool Co. v. Judd et al., 3 Fish. P. C. 141.— Siiipman, 1867. 181. A certified copy of the specification of a patent is not admissible in evidence. The copy should include the whole patent. Davis v. Gray, 17 Ohio St. 330.— Bkinicbiihob'f, 1867. 182. Where the bill of complaint explicitly charged infringement, and one witness for com- plainants explicitly testified thereto, and there were corroborating circumstances, infringement was held to be established. Ooodyear et al. v. Berry, 2 Bond, 189.— Leavitt, 1868. 183. " The issuing of the patent by the proper officer, and the production of it in the courts, is . prima facie evidence of the utility and novelty of the invention." Haselden v. Ogdeii, 3 Fish. P. C. 378.— Sherman, 1868. 184. " Infringement is an affirmative allega- tion made by the complainant, and the burden of proving it is upon him, unless it is admitted in the answer.'' Agawam Co. v. Jordan, 7 Wall. 583.— Sup. Ct. 1868. 185. Where defendant is specifically inter- rogated in' the bill as to infringement " evasive answers, under such circumstances, if not posi- tively equivalent to admissions, afford strong presumptive evidence against the respondent;" — /i. 186. Letters-patent were granted to Thomas Blanchard, December 18th, 1849, for an improve- ment in bending wood, and the patent was duly extended ; then suit for infringement being brought, defendant pleaded the general issue, without any notice of any special defence. " Defendant offered in evidence the reissued patent granted to one John C. Morris, dated May 22d, 1832, as the foundation of the intro- duction of evidence to show that the machine or machines which he was suing were construct- ed by him under a license from the patentee in 298 EVIDENCE. that patent, and in accordance with tlie specifi- cation and claims of that patent as reissued." The court said : " Such evidence was inadmis- sible for the purpose for which it was offered, and should have tieen excluded, as the novelty of the invention was not open, and because it presented, on the question of infringement, an immaterial issue not involved in the pleadings, and because the evidence was well calculated to mislead the jury by withdrawing their attention from the real subject-matter in controversy." Blanchard v. Putnam, 8 Wall. 420.— Sup. Ot. 1869. ^ 187. " Whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, ' he shall state, in his notice of special matter, the names and places of residence of those whom he intends to prove to have possessed a prior knowl- edge of the thing, and where the same had been used, ' and if he does not comply with that re- quirement no such evidence can be received under the general issue. ' ' —lb. 188. Compliance with the provision as to notice of special defence " being a condition pre- cedent to the right of the defendant to introduce such evidence, under the general issue, it neces- sarily follows that the onus probandi is on him to show that the required notice was given to the plaintiff thirty days before the trial, and if he fails to do so he cannot introduce any evidence to controvert the novelty of the patent." — lb. 189. "In equity the proofs and allegations must correspond. The examination of the case by the court is confined to the issues made by the pleadings. Proofs without the requisite al- legations are as unavailing as such allegations would be without the proofs requisite to support them." Rubber Co. v. Goodyear, 9 Wall. 788. —Sup. Ct. 1869. i 190. Respondents put in evidence, as to prior use, not set up in the answer. Complainant did not object until the hearing. Evidence admitted on the ground of objection waived. Brown v. Hall etal., 6 Blatch. 401.— Blatchpord, 1869. 191. "An objection to testimony which does not state the ground of objection is not a legal or valid objection. " — lb. 193. Defences set up in the answer will not be examined, where the burden of proof is upon the respondents, unless some proof is introduced in their support. Cook v. Howard et al., 4 Fish. P. C. 369.-CLIPPORD, 1870. 193. "Want of novelty being set up by the respondents, the burden is upon them to prove the allegation, as the prima facie presumption is the other way." — lb. 194. "Issued by public authority, as letters- patent are, they are presumed to secure to the patentee the exclusive right which they purport to grant, and where the answer is silent. upon the subject, or where the respondent introduces no proof to establish the opposite theory, the complainant may safely repose upon that pre- sumption, without offering any evidence to con- firm it." Hudson v. Draper et al., 4 ClifiE. 178. — Clifpobd, 1870. 195. " The letters-patent of the defendant arc admitted In evidence on the question of novelty as entitled to some weight, where the evidence is nicely balanced, but it is quite incorrect to suppose that a patent subsequent in date can have the effect as evidence to overcome the prima facie presumption otherwise afforded by the introduction of one of prior date, that the patentee was the original and first inventor of what is therein described as an improvement." Goodyear Dental Vulcanite Co. et al. v. Gardner, 3 Clifford, 408.— Clippord, 1870. 196. " Where the invention or inventions are embodied in a machine, the question of infringe- ment is best determined by a comparison of the machine made by the respondent with the ma- chine described in the complainant's patent or patents, where more than one is embraced in the same suit." Seymour v. Osborn, 11 Wall. 516. -Sup. Ct. 1870. 197. Evidence as to the state of the art may be introduced without notice in the answer, but it is only considered by the court in construing the patent, and not in determining whether the pat- entee was the first inventor. Railroad Co. v. Dubois, 12 Wall. 47.— Sup. Ct. 1870. 198. Models of machines, when rightly com- prehended, afford very persuasive evidence. Carter etal. v. Baker et al., 1 Sawyer, 512. — Sawybr, 1871. 199. Where the evidence as to a fact in dispute [as, for instance, the character of a prior machine] is in the possession of one of the parties, and he does not produce it, the presumption is strongly against the claim made by such non-producer. ^ailey Washing & Wringing Math. Co. v. Lin- coln et al., 4 Fish. P. C. 379.— Lowell, 1871. 200. Doubts are to be resolved against the party on whom the burden rests. M'Millin et al. Y.Barclay et al., 3 Pittsb. 377.— McKbnnan, 1871. 201. An averment of mental unsoundness on the part of the patentee, in defendants' answer, unsupported by any proof, does not require any consideration. Jordan v. Wallace et al., 1 Pa. Leg. Qaz. Rep. 854.— McKennan, 1871. 202. Where defendant contents himself with EVIDENCE. 299 attacking the correctness of a model produced by complainants as representing defendant's ma- chine, and withholds the evidence which is clearly in defendant's possession as to the char- acter of that machine, the act of the defendant makes against him on the question in dispute. Union Paper-Bag Machiiie Co. et al. v. Binney, 5 Fish. P. C. 166.— Lowell, 1871. 203. On the question of the novelty of the pat- ent in suit, a prior patent, claimed to be for the same thing, is admissible in evidence. Tucker V. Spalding, 13 Wall. 453.— Sup. Ct. 1871. 204. A prior patent cannot be used to antici- pate the later patent in suit in the absence of proper allegation in the answer. Am. Saddle Co. V. Hogg, 1 Holmes, 133.— Sheplby, 1872. 205. " No notice is necessary in order to justi- fy the admission of evidence, for the purpose of showing the state of the art in respect to im- provements existing at the date of the plaintiff's invention, in the class of articles to which it be- longs." — Tb. 206. Imputing to witnesses fraud and perjury before the examiner, deserves severe reprehen- sion ; and proceedings before examiners returned to court " abounding in improper remarks, prolix statements touching the conduct of coun- sel, officers of the Patent Office, witnesses, and others, which are not proof, . . . ought to have been expunged at the cost of the complain- ant, before the case was brought to a hearing, or the proofs printed for the use of the court." SmitJi v. Elliot, 9 Blatch. 400.— Woodbopf, 1872. 207. Reference in an answer to a former ap- plication for patent does not warrant calling that applicant to testify as to his acts outside of the application. Becker v. Orote et al., 10 Blatch. 331.— Blatchford, 1872. 208. " The production of the patent k. prima facie evidence that the several grants of right contained in it are valid, and that the several things, matters, and devices covered by it were new, that they were useful." McGonib et al. v. Brodie, 1 Woods, 153.— Woods, 1872. 209. In an action at law before a jury, under the defence of prior pubUcation, the prior patent must go to the jury. Westlake v. Cartter et al. , 6 Fish. P. C. 519.— Treat, 1873. 210. Although, for lack of proper pleading, a prior patent cannot be offered in evidence to im- peach the plaintiff's patent, it may be offered in evidence to a jury to prove the prior art.— JJ. 211. A scientific work, such as Mahan's " Civil Engineering," cannot be offered in evidence to prove the prior art. — 11. 212. On the trial of an infringement case be- fore a jury, plaintiff's patent, and the appurte- nant correspondence, cannot be offered in evi- dence.— /6. 213. Evidence of prior use, not set up in de- fendant's answer, cannot be considered. Rich- ardson V. Lockwood, 6 Fish. P. C. 454. — Lowell, 1873. . 214. As to mode of proving the legal existence of a corporation, see — . Borsey Harmater JRewlving Rake Co. v. Marsh et al. , 6 Fish. P. C. 387.— McKennan, 1873. 215. The burden of proof is upon him who denies the validity of the acts of the Commis- sioner. — lb. 216. Evidence taken under objection, for lack of proper averment in the answer, does not become admissible by amending the answer. Roberts v. BticJc, Jr., 1 Holmes, 224.— Shbplet, 1873. 217. Evidence taken by a defendant was properly objected to on the ground of lack of proper averment in the answer. The parties agreed that if the court permitted amendment of the answer, the testimony should then be con- sidered. The court permitted the amendment upon the condition that defendant should not in any event recover costs up to the time of hear- ing the case. — lb. 218. Where evidence is offered not warranted by the defendant's answer, a proper case may arise at the hearing, for proper amendment of the answer on motion and the granting thereof nunc pro tunc. Roberts v. Ryer, 11 Bissell, 11. — Blatchford, 1873. 219. Testimony that is not admissible because of lack of proper allegation in the answer, does not become admissible when the answer is amended ; but it may then become admissible by agreement of both parties and permission of court. Roberts v. Blake, 3 O. G. 268.— Shep- LEY, 1873. 220. "The patent, when introduced in evi- dence by the complaining party in a suit for in- fringement, affords a prima facie presumption that the patentee is the original and first inventor of what is therein described and claimed as his invention. Application for patent is requii-ed to be made to the Commissioner appointed under authority of law, and inasmuch as that officer is empowered to decide upon the merits of the ap- plication, his decision in granting the patent is presumed to be correct." Mitchell v. Tilghman, 19 Wall. 287.— Sup. Ct. 1873. 221. Rejected applications are not, under all circumstances, inadmissible in evidence. "By themselves they are inconsequential, but when the inventor's idea is perfected by the practical 300 EVIDENCE. adaptation of it, in tlie form of mechanism, they are valuable guides in ascertaining the date of the invention, and the design of the inventor, and the principle, intended functions, and mode of operation of his mechanism, and they must, therefore, necessarily be considered in connec- tion with it." Northwestern Fire Extinguisher Co. y. Philadelphia Fire ExtiTiguisher Co., 1 Bann. & Ard. 177.— McKbnnan, 1874. 223. "Parties are not allowed to experiment with witnesses, suffering them to be examined, and then subjecting them to cross-examination, and afterward, if the testimony does not happen to suit them, asking for its exclusion. The ob- ject of the statute is to guard plaintiffs against surprise ; but if they will not avail themselves of the privilege, and require the previous notice, they must not expect the court to invoke for them the provisions of the act. ' ' Crouch v. Speer et al., 1 Bann. & Ard. 145.— Nixon, 1874. 223. Failure to interpose an objection " when the witness is offered, before the examination, is a waiver of notice, and ... it is too late, after acquiescing in the admission of the testimony, to object to the evidence for want of notice. ' ' Boemer v. Simon etal., 1 Bann. & Ard. 138. — Nixon, 1874. 324. The uncontradicted admission of an ex- pert concludes the party for whom he testifies. Wells V. Jacques et al., 1 Bann. & Ard. 60. — Nixon, 1874. 225. " The presumptions of the law are in favor of the patent and the utility of the invention. ' ' Orier v. Ooetinger, 1 Bann. & Ard. 553. — Swing, 1874. 226. " The novelty of a patented invention cannot be assailed by any other evidence than that of which the plaintiff has received notice ; and ... the state of the art, at the time of the alleged invention, though proper to be consid- ered by the court in construing the patent, in the absence of notice, has no legitimate bearing upon the question whether the patentee was the first inventor." Le Baw et al. v. Hawkins et al., 1 Bann. & Ard. 428.— Nixon, 1874. 327. A suit was brought for the infringement of reissued letters-patent for skates, dated April 6, 1875. Complainant, in taking his testimony to prove his prima facie case, caused a subpoena to be issued to one of the defendants requiring liim to produce before the examiner " all books, papers, and documents whatever, that will show the number of skates made or delivered by the defendants, or their employes, since the sixth day of April, 1875." The court held the reis- sued patent in suit to be for a combination. A part of the examination of said defendant by complainant's counsel was as follows : " Q. 26. During the period of time between the reissue of the patent and the fiUng of the bill, did you have on hand a considerable number of each of the parts constituting the clamping mechanism like that in exhibit No. 1 ? " A. Yes. We always do have such parts in the factory. ' ' Q. 37. Since that time, have you used any of the parts that you then had in the store in the construction of skates, substantially like com- plainant's exhibit No. 1 ?" (No answer). The court ordered the subpcena duces tecum to be modified by inserting the clause " and until the commencement of the suit, ' ' after the words and figures " sixth day of April, 1875," but at the same time ordered defendant, and any other witnesses, to answer question 27, and all other questions tending to show the subsequent use of any other parts of the skates, like a certain ex- hibit which defendants had on hand when the suit was begun. Turrell v. Spaeth et al., 3 Bann. & Ard. 185.— Nixon, 1875. 338. " It cannot be . . . admitted, that the written declarations of a trustee, in a convey- ance to a third person, of property which had previously been conveyed to the trustee by his cestui que trust, can be used against the latter to determine the intent of both parties, in making the original conveyance, and to show the extent of the interest which the cestui que trust intend- ed to convey by his deed. " Waterinan-^. Wal- lace & Sons et al., 13 Blatch. 138. — Shipmax, 1875. 229. Evidence as to prior patents and prior use, not set up in defendant's answer, will not be considered in the hearing. Carsteadt v. United States Corset Co., 13 Blatch. 199.— Ship- man, 1875. 230. A certified copy of a Patent Office model is not conclusive evidence of the character of the model. Johnson v. Beard, 2 Bann. & Ard. 50. — WooDiiupp, 1875. 231. The rule of presumption is that, ordinar- ily, a witness who testifies to an affirmative is to be preferred to one who testifies to a negative. Hawes v. Antisdel, 2 Bann. & Ard. 10. — Long- year, 1875. , 333. " Of private and special facts, in trials in equity and at law, the court or jury, as the case may be, is bound carefully to exclude the influ- ence of all prior knowledge. But there are many things of which judicial cognizance may be taken." " Among the things of which judicial notice is taken, are : the laws of nations ; the general customs and usages of merchants ; the EVIDENCE. 301 notary's seal ; things which must haiDpcn accord- ing to the laws of nature ; the coincidences of the days of the week with those of the montli ; the meaning of words in the vernacular lan- guage ; the customary abbreviations of Christian names ; the accession of the Chief Magistrate to office and his leaving it. In this country, such notice is taken of the appointment of members of the Cabinet, the election and resignation of senators, and the appointment of marshals and sheriffs, but not of their deputies. The courts of the United States take judicial notice of the ports and waters of the United States where the tide ebbs and flows, of the boundaries of the several states and judicial districts, and of the j laws and jurisprudence of the several states in ! which they exercise jurisdiction. Courts will take notice of whatever is generally known within the limits of their jurisdiction ; and if the judge's memory is at fauit, he may refresh it by resorting to any means for that purpose which he may deem safe and proper. This ex- tends to such matters of science as are involved in the eases brought before him. " Brown et al. V. Piper, 91 U. S. 37.— Sup. Ct. 1875. 333. Where the patent in suit is for a refrig- erating process, the court may take judicial notice of such a common thing as an ice-cream freezer. — lb. 234. " The law is well settled that the letters- patent in question, where they are introduced in evidence in support of the claim, if they are in due form, afford prima facie presumption that the alleged inventor is the original and first in- ventor of what is therein described as his im- provement." Tucker v. Tucker M'fo Co., 4 Clifford, 397.— Clifford, 1876. 335. " The patent, if regular in form, and in- troduced in evidence, affords a prima facie presumption that the alleged inventor is the original and first inventor of what is therein de- scribed as his improvement. ' ' Brady v. Atlantic Win-ks, 4 Cliff. 408.— Clifford, 1876. 336. " Where the invention is embodied in a machine, the question of infringement is best de- termined by a comparison of the machine or ap- paratus constructed or used by the respondent, with the mechanism described in the specifica- tion of complainants' patent." I^Uer et al. v. Tentzer et al., 94 U. S. 388.— Sup. Ct. 1876. 337. " Proof of the state of the art is admissi- ble in equity cases without any averment in the answer touching the subject, and in actions at law without giving the notice required when evidence is offered to invalidate the patent. It consists of proof of what was old and in general use at the time of the alleged invention ; and may be admitted to show what was then old, or to distinguish what was new, or to aid the court in the construction of the patent. Donbar et al. v. Myers et al, 94 U. S. 187.- Sup. Ct. 1876. 338. "There are certain matters, as the Su- preme Court of the United States has decided, consonant with right reason, which the court can always consider independent of affidavits — such general principles as are supposed to be known to everyone of ordinary intelligence." Adams & Westlake Mfg Co. v. St. Louis Wire Goods Co., 3 Bann. & Ard. 77.— Treat, 1877. 339. Rejected applications for patents are not admissible in evidence as anticipatory of a later patent. Herring et al. v. Nelson et al., 14 BUtch. 393.— Johnson, 1877. 340. ' ' The examination of an adverse party as a witness, before trial, in a common lawsuit, cannot be had. . . . But a suit in equity, to ob- tain a discovery under oath, in aid of the prose- cution or defence of a suit at law, is not abol- ished in the courts of tlie United States." Beardsley v. Littell et al., 14 Blatoh. 103. — Blatchpord, 1877. 341. " The court can always best judge from models whether one machine differs in principle and mode of operation from another." Bird- sail V. Hagerstown Agricultural Implement M'f g Co., 1 Hughes, 59.— Bond, 1877. 243. Where a bill of complaint charges in- fringement, and an answer denies it under oath, " it is necessary . . . for the plaintiffs to sustain the allegation of infringement by a preponder- ance of evidence.'' Am. Middlings Purifier Co. V. Atlantic Pilling Co., 4 Dillon's C. C. 100.— Miller and Dillon, 1877. 343. A rejected application for a patent is not admissible in evidence to impeach the novelty of a subsequent patent. Rubber Step M'fg Co. v. Metropolitan R. R. Co. et al. , 3 Bann. & Ard. 352.— Shbplby, 1878. 344. ' ' The grant of a patent is an adjudica- tion that every fact, which must nece.ssarily appear to entitle the patentee to it, has been established by sufficient proof. . . . This evi- dence is, however, only presumptive, and its truth may be contested." Konold et al. v. Klein et al., 3 Bann. & Ard. 326.— McKbnnan, 1878. 245. " Where the invention is embodied in a machine, manufacture, or product, the question of infringement, which is a question of fact, is ordinarily best determined by a comparison of the exhibit made by respondent with the mech- anism described in the complainants' patent." Bates et al. v. Coe, 98 U. S. 31.— Sup. Ct. 1878. 246. While the court cannot take judicial notice of a model of a machine, it has full power 302 EVIDENCE. to personally inspect it and base conclusions upon that inspection. Boeret v. Thatcher et al., 3 Plippin, 234.— Baxter, 1878. 247. Where a person is charged with infringe- ment, and does not deny it in his answer, and the patented machinery is proved to be in his possession, infringement is sufficiently shown. Gear v. FitcJi, 3 Bann. & Ard. 573.— Lowell, 1878. 248. In the absence of other evidence com- plainant's invention is of the same date as his patent. Cahill v. Brown, 3 Bann. & Ard. 580. — Clifford, 1878. 249. " Questions of the kind where the inven- tion is embodied in a machine, are usually best determined by a comparison of the machine made by the respondent with the mechanism de- scribed in the specification and drawing of the complainant's patent." Am. WJiip Co. v. Xoot- bard, 4 Clifford, 495. -Clifford, 1878. 250. Mere application for patents cannot be considered on the question of novelty. Barker v.- Stow, 15 Blatch. 49.— Blatchford, 1878. 251. The record of the evidence stated that plaintiff objected to the testimony of one With- erell ' ' as incompetent under the rules of the court. " The record stated further that plaintiff objected to Witherell's testimony as " incompe- teat under the laws and rules governing the practice in the circuit courts of the United States." The court held the objections insuffi- cient, and directed the attention of the defend- ant to the point that the objection was based on the omission of the name of Witherell from the answer, and stated that " An objection of that kind may be waived, and it is waived unless it isdistinctly made. The time to make it is when the evidence is taken and not at the first hear- ing. " — lb. 252. " AVhere the invention is embodied in a machine, manufacture, or product, the question of infringement, which is a question of fact, is ordinarily best determined by a comparison of the exhibit made by the respondent with the mechanism described in the complainants' pat- ent." Eelleher et al. v. Darling, 4 Clifif. 424. — Clifford, 1878. 253. A suit was brought for alleged infringe- ment of a patent for metal corner sockets of show-cases. The court took judicial notice that such things were old. Terhune v. Phillips, 99 U. S. 592.— Sup. Ct. 1878. 254. " Where a patent in suit is introduced in evidence it affords & prima facie presumption that the invention is new and useful, but the burden to prove infringement never shifts if the charge is denied in the plea or answer. Suffi- cient proof of infringement may be derived from the comparison of that which is used by the de- fendant party, with the description of the in- vention given in the specification of the patent which constitutes the foundation of the suit ; and where the invention is embodied in a machine or an apparatus, that mode of conducting the examination is usually the most satisfactory." Imheauser v. Buerk, 101 U. S. 647. — Sup. Ct. 1879. 255. Where a party puts a writing in evidence in his own behalf, all the parts of the writing are in evidence for both parties. Campbells. James et al., 17 Blatch. 42. — Wheeler, 1879. 256. An affidavit which lacks venue and no- tarial seal, which is verified before a justice of the peace or verified before plaintiflf's counsel, is defective in all these regards. Barker v. Stowe, 4 Bann. & Ard. 485. — Blatchford, 1879. 257. Certified copies of recorded assignments are evidence of what is recorded, but are not evidence that there are not other records. Am. Diam/md Rock Boring Co. v. SJieldon et al., 17 Blatch. 208.— Wheeler, 1879. 258. " After notice of the name and residence of the inventor, and of the place of use, and of the name of some one who has used it, has been given or waived, all other witnesses may be ex- amined without notice." Woodbury Patent Planing Mach. Co. v. Keith, 4 Bann. & Ard. 100.— Lowell, 1879. 259. Testimony expressing opinions is onlj' admissible from an expert. Tooliey v. Harding, 4 Hughes, 253.— Morris, 1880. 260. "Certified copies of disconnected papers in the Patent Office, showing former acts and declarations of the opposing party with reference to the procurement of the patent in suit, are admissible in evidence." — lb. 261. " An objection to the examination of a witness should state specifically the ground of the objection, in order that the opposite party may have the opportunity of removing it, if pos- sible." Planing Macli. Co., Woodbury, v. Keith, 101 U. S. 479.-SUP. Ct. 1879. 262. A model with a placard " proves nothing of itself. ' ' Page ct al. v. Holmes Burglar Alarm, Tel. Co.: 17 Blatch. 484.— Blatchford, 1880. 263. Where a witness deposes to alleged facts impeaching the patent sued on, and where he has testified in prior suits on the same patent and said nothing about such alleged facts, it is "impossible to accept what he says as worthy of reliance." Atlantic Giant Powder Go. v. Dittmar Powder iTf'g Co. et al., 17 Blatch. 531.— Blatchfokd, 1880. EVIDENCE. 303 264. By tlie court : " Whether the invention was known, or used, or described in the exact manner, or by the persons set up in the answer or not, the patent, in this respect, ... is pot void in its face for want of novelty within that common knowledge which is sufficient for dis- missing the bill without regard to the answer. ' ' Quirolo V. Ardito et al., 17 Blatch. 400. — Wheeler, 1880. 265. By the court : " Every one having ex- perience in these matters knows how easy it is to exhibit an article of manufacture to an honest and well-meaning person, and procure his affi- davit that many years before he saw or made something similar to it. The witness may be quite sincere, but altogether mistaken." Green- wood V. Braeher, 1 Fed. Eep. 856. — Nixon, 1880. 266. As evidence offered as to the state of the art, and whereby to construe the claitn, cannot be objected to, it follo'Ws that complainants' al- lowance of the taking of such evidence without objection is no waiver of his right to object to its consideration as anticipatory evidence, it not having been set up in the answer. Zane et al. V. Soffe, 3 Fed. Rep. 229.— Whbelbk, 1880. 267. Defendants answered complainant by saying that they were operating under a patent of later date than complainant's, and denied in- fringement. In evidence defendants showed that they were operating under a patent of later date, which had been in different litigations, and the date of the invention embodied therein had been by different judges found to antedate com- plainant's patent. Held, that defendants could not, under the pleadings, avail themselves of such prior findings, the present complainant not having been a party to any of the prior suits. Day Y. Conibination RvMer Co. et al., 2 Fed. Rep. 570.— Wheeler, 1880. 268. By the court : " If the patent was not ac- companied by the application, the date of the patent would be deemed the date of the inven- tion." Eagleton M'f'g Co.y. West, Bradley & Garey Wfg Go. et al., 18 Blatch. 318.— Wheel- er, 1880. 269. "The application, when produced in order to be effective evidence to carry the date of the invention back to its own date, must be an application for substantially the same inven- tion for which the patent is granted, without ma- terial variation or addition. " — lb. 270. When defendants show prior use ante- dating the patent, " the burden is shifted to the plaintiff to show invention or discovery by the patentee still prior to that." — lb. 271. "A patentee whose patent is assailed upon the ground of want of novelty may show by sketches and drawings the date of the in- ceptive invention, and if he has exercised reason- able diligence in perfecting and adapting it, and in applying for his patent, its protection will be carried. back to such date." Kneelandet al. v. Sheriff et al., 2 Fed. Rep. 901.— McKbnnan, 1880. 273. A patentee is entitled to the presumption of priority which his patent affords, and this pre- sumption is only overcome by clear and satisfac- tory proof to the contrary. " Some of the cases hold that the defence that the patentee was not the original and first inventor of the patented subject can only prevail when shown beyond any reasonable doubt. ' ' Rogers v. Beeclier et al. , 3 Fed. Rep. 639.— Wallace, 1880. 273. Complainant's invention being a process of making birch beer by a certain formula, it was held not sufBcieut to establish infringement to show a substantial similarity between com- plainant's and defendants' beer in taste, the de- fendants meanwhile denying infringement. — lb. 374. Where a prior patent is set up to defeat a later one, the file wrapper, etc., of the prior pat- ent are not admissible in evidence. Howes et al. V. MeJSTeal, 17 Blatch. 396.— Blatchford, 1880. 375. The ditficulties inherent in the subject, when it is attempted to attack the validity of a patent by putting in evidence matters occurring many years before, must be fully overcome in order to succeed in the attempt. Sinclair et al. V. Backus, 4 Fed. Rep. 539.— Lowell, 1880. 276. When a patentee attempts to impeach a patent he has sold to others, his evidence will have little weight except when corroborated. — lb. 377. By the court : " We do not intend to be understood as intimating that the witnesses who have testffied to the \arious instances of the use of barbed wire for fencing purposes have been guilty of intentional false swearing, but simply to say that this proof, which is almost wholly made up of the recollections of witnesses revived after the lapse of many years, and contradicted as it is in most instances by the explicit testimony of other equally credible witnesses, leaves so much doubt as to the actual existence of these various barbed wire fences, or any of them, as to make it at least unsafe ground on which to defeat a patent." Washburn & Moen M'f'g Go. et al. V. Haish, 10 Bissell, 65. — Blodgbtt and Drummond, 1880. 378. ' ' Exhibits introduced by a party without needful explanation do not deserve and will not receive much consideration." Miller et al. v. Smith ctal., 5 Fed. Rep. 859.— Clifford, 1880. 304 EVIDENCE. 279. " When the defence of want of novelty- is made, it is the duty of the tribunal, whether court or jury, to give it efiEect ; but such proof or testimony should be weighed with care, and never be allowed to prevail when it is unsatis- factory, nor unless its probative force is sufficient to outweigh theprima facie presumption arising from the introduction of the patent." — lb. 380. For an example of testimony as to prior use not found to be clear and conclusive enough to establish such use see—. Wilson v. Ooonet al., 18 Blatch. 533.— Blatchpord, 1880. 381. Example of evidence of prior use held sufficient — . Marks v. Fox et al., 18 Blatch. 503.— Blatchford, 1880. 383. Evidence of prior use not set up in de- fendants' answer, stricken out. — lb. 283. By the court : ' ' The defendants, in sell- ing the soaps thej' sold, represented them as con- taining ten per cent of carbolic acid by printed matter on the boxes en veloping them. This fact, with the affirmative testimony as to their con- taining carbolic acid, is sufficient to establish the fact, although by the lapse of time and exposure they may, at certain date, have so parted with their carbolic acid as to make it impo.ssible ap- preciably to recognize its presence. ' ' Buehan et al. V. McKesson etal.,li'Sla.tch.. 485. — Blatch- pord, 1880. 384. The testimony of a number of persons to circumstances of prior invention will not avail as proof where they are shown to be mistaken as to dates incidentally brought in. U. S. Stamping Go. v. Jewett et al., 18 Blatch. 469. — Blatchpord, 1880. 385. The fact that, in numerous suits many years before, the defendant took licenses, and complainant withdrew the suits, is strong evi- dence that the prior use then set up as a defence was not a sustainable one. Atwood v. Portland Co., 10 Fed. Rep. 283.— Lowell, 1880. . 286. A replication filed after the time allowed, and testimony taken by .complainant more than three months thereafter, may stand as regular if the court so order. Macher v. Hayes, 19 Blatch. 26.— Blatchpord, 1881. 387. A bill of complaint alleged that the de- fendant's use of the patented machine was with out the complainant's consent. This allegation was not specifically denied In the answer. Complainant did not prove want of consent. " It was for the defendant to prove consent, if anything needed to be proved on the subject." —lb. 388. Amid testimony as to prior use so con- tradictory as to be uncertain, the finding will be for the patent. —lb. 389. For analysis of objections made to the regularity of testimony taken and the findings thereon, see — . Fischer v. Hayes, 6 Fed. Rep. 86.— Blatchpord, 1881. 390. As to what amounted to proof of in- fringement under certain circumstances, see — . Fischer v. Neil, 6 Fed. Rep. 89. — Blatchpord, 1881 ; Fischer v. 0' Shaughnessey et al., 6 Fed. Rep. 93. — Blatchpord, 1881. 391. " If no objection is made at the time to evidence, all objection to it is considered as waived. If a general objection to it is made, but no ground of objection is specified, the ob- jection will not be considered. If a ground of objection is stated, all grounds not specified are considered as waived." — lb. 393. Where patents are put in evidence to an- ticipate complainants' patent, and no testimony is given concerning them, they will not receive much attention. Putnam et al. v. Von Hofe, 19 Blatch. 63.— Blatchpord, 1881. 293. " It is a presumption of law that all me- chanics interested in upholding or defeating a patent were fully acquainted with the state of their art when they took out their patent or when they built their machine. This presump- tion is founded upon a policy like that which imputes to all persons charged with crime a knowledge of the law. It is necessary to the safe administration of justice." Crompton v. Knowles etal., 7 Fed. Rep. 199. — Lowbll, 1881. 394. It seems that expert evidence as to whether an original patent shows and describes what is shown and described in its reissue is ad- missible. Potter et al. they use important words, nor what facts they take into view, nor what stand- ards of comparison they as.sume, their opinions are of comparatively little use in guiding the court to a safe conclusion." Sargent et al. v. Carter, 11 Mo. L:.Rep. 651.— Curtis, 1857. 20. By the court: " It may be assumed in this and in most other patent cases that neither party would have called the experts on his own side unless he had supposed that their opinions in reference to the straining point of the case would be directly opposed to the opinions which he supposes will be expressed by the expert of his adversary. Their well-considered and de- liberately formed opinions are asked in advance, and if they are found to be adverse to the party who seeks such opinion, that expert is not called on his part. . . , Upon these questions of me- chanical equivalents, of substantial identity and substantial difference of organization and mode of operation, these opinions are to be regarded . . . as opinions merely." Oonoverv. Boachet a?., 4 Fish. P. C. 13.— Hall, 1857. 21. " There are various classes of cases which depend upon the knowledge of a peculiar art or science for their solution, of a particular busi- ness, requiring a peculiar knowledge, in order to form a satisfactory judgment of the question involved ; and in this case the law allows testi- mony to be given by those skilful in the partic- ular art, science, or profession, and permits them to give their opinions, as results which they arrive at from an examination of the questions of fact that are before the jury." Jolinson v. Moot, 1 Fish. P. C. 351.— Spbagub, 1858. 33. " The testimony of experts is useful to show the operation of devices ; indeed, very es- sential ; but when experts undertake to tell what the patent is for, they assume the duty of the court ; and when they undertake to say what is or what is not a violation of the patent, they .not only assume the duty of the court, but of the jury." Waterhury Brass Co. v. iV. Y. & Brook- lyn Brass Co., 3 Fish. P. C. 43. — Ingbrboll, 1858. 33. By the court- "Experience has caused me to have little confidence in the opinions of experts and professors, who often have more knowledge than judgment. Courts and juries may be much benetited in their researches by the one, while they would be led into great error by confiding too much to the other. ' " The art of printing was stumbled over for five thousand years, and if a patent for it were now presented to our expert, he would show you at once that the whole art consisted in mul- tiplying impressions from a combination of mov- able types. He would point you to the tracks of animals as original impre.'isions from movable types, and show the invention of printing letters to be as old as Adam. " Few patents could stand the test of such in- genuity as this. Inevitable as it may appear, yet it is nevertheless true that on the trial of the originality of Morse's telegraph, it was gravely argued that two thieves in the penitentiary, who had corresponded by means of scratches and dots on the prison wall, had preceded Morse in the invention of this most astonishing and useful art. " Livingston et al. v. Jones et al. , 1 Fish. P. C. 521.— Grier, 1859. 34. ' ' Experts may be examined to explain terms of art and the state of the art at any given time. They may explain to the court and the jury the machines, models, or drawings ex- hibited. They may point out the differences or identity of the mechanical devices involved in their construction. The maxim of ' cuique in sua arte credendum ' permits them to be ex- amined in questions of art or science peculiar to their trade or profession ; but professors or me- chanics cannot be received to prove to the court or jury what is the proper or legal construction of any instrument of writing. A judge may ob- tain information from them, if he desires it, on matters which he does not clearly comprehend, but cannot be compelled to receive their opinions as matters of evidence. Experience has shown that opposite opinions of persons professing to be experts may be obtained to any amount ; and it often occurs that not only many days, but even weeks are consumed in cross-examinations, to test the skill or knowledge of such vyitnesses and the correctness of their opinions, wasting the time and wearying the patience of both court and jury, and perplexing instead of elucidating the questions involved in the issue. ' ' Day et al. V. Stellman et al., 1 Fish. P. C. 487.— aiLBS, 1859. EXPEET. 313 25. " The law permits the opinions of men called experts to he given in evidence ; and when such men are qualified and free from bias, their testimony is entitled to great respect." Morris V. Barrett et al. , 1 Bond, 354. — Lbavitt, 1859. 36. " The opinions of witnesses who are ex- perts are admitted, contrary to the general rule, which requires witnesses to testify only as to facts." Co7iover v. Mapp, 4 Fish. P. C. 57. — Ingersoli,, 1859. 37. " It would seem as well, if not better, that the opinions of such witnesses should be ex- cluded from the consideration of the jury. " — fb. 38. Where the opinion of an expert involves, in effect, the construction of a patent, it is with- out force. My v. Monson & Brimfield M'fg Oo. , 4 Fish. P. C. 64.— Speaque, 1860. 39. " The mere opinion of experts is not en- titled to much weight unless founded on good and satisfactory reasons. In many cases the testimony of experts is somewhat colored with feelings of a partisan character. The statement of a fact by one who has seen the machine worked is better, if reliable, than the mere opin- ion of ever so many scientific experts." Cox v. G-riggs, 1 Bissell, 363.— Dktjmmond, 1861. 30. " The testimony of this class of witnesses, when intelligent and otherwise reliable, is of great value in patent-right controversies involv- ing questions of identity as between two ma- chines." Potter et al. v. Muller, 2 Fish. P. C. 465.— Leavitt, 1864. 31. It is not uncommon that in different cases experts do not agree in their opinions as to what are matters of form and what are matters of substance. Turrill et al. v. III. Cent. S. B. Co., 3 Bissell, 66.— Drummond, 1867. 32. Where experts of equal intelligence testify in direct opposition to each other, models form excellent evidence for the court. Crompton v. Belknap Mills et al., 3 Fish. P. C. 536.— Clark, 1869. 33. " The opinions of experts are evidence as to matters of science within their peculiar de- partments of knowledge, but the value of such opmions must be tested by tlie reasons on which they are built. ' ' Jordan v. Dobson et al. , 2 Abb. U. S. 398.— Strong, 1870. 34. The testimony of experts is to be consid- ered like any other evidence. It is to be tried by the same tests that are applied to the evidence of other witnesses, and as much credit and weight given to it as it is deemed entitled to from all the circumstances, and no more. Ca/rter et al. V. Baker et al., 1 Sawyer, 512.— Sawyer, 1871. 35. The opinions of experts are of little value when weighed against the demonstrations of actual results. Seymour et al. v. Marsh et al., 9 Phil. 380.— McKennan, 1872. 36. "When the question of infringement is under consideration, and expert testimony is necessary, the action of official exjjerts on the subject is entitled to some consideration, espe- cially where doubt exists. ' ' Westlake v. Gart- ter et al., 6 Fish. P. C. 519.— Treat, 1873. 37. Courts are governed, to a certain extent, by the testimony of experts. Ingels v. Mast, 6 Fish. P. C. 415.— Swing, 1873. 38. By the court : "I have not examined minutely the testimony of the experts produced by the respective parties in this case, because T do not ordinarily attach much importance to the opinion of witnesses so produced. I find them generally advocates of the party producing them. I have rarely derived any assistance from an expert who was not summoned and examined on the suggestion of the court itself. ' ' King v. Louisville Cement Co., 6 Fish. P. C. 336.— Bal- lard, 1873. 39. Experts usually differ about the questions at issue. Wells v. Jaqu.es et al., 1 Banning & Arden, 60. — McKennan and Nixon, 1874. 40. The uncontradicted admission of an expert concludes the party for whom he testifies. — lb. 41. By the court : " I have no confidence my- self in the impression produced by any number of ex ^arie. affidavits of experts." American, Middlings Purijier Co. v. Christian et al., 4 Dil- lon, C. C. 448.— Miller, 1877. 42. " Whenever the matter in contest in- volves an immense sum in value, and where the question turns mainly upon opinions of experts, there is no difficulty in introducing any amount of them on either side ; and yet this class of cases is one in which there is value to be at- tached to experts." — lb. 43. Expert witnesses are usually as wide apart as are the poles asunder. Turrell v. Spaeth, 3 Banning & Arden, 458.— Nixon, 1878. 44. Testimony expressing opinion is only ad- missible from an expert. Toohey v. Barding, 4 Hughes, 253.— Morris, 1880. 45. A court having in its hands the letters- patent under discussion, with illustrative models and the machines used, can and will decide a question of mechanical equivalents for itself, al- though there be no expert evidence upon that point. Doyle v. Spaulding et al., 19 Fed. Rep. 744.— Wheeler, 1884. 46. Where expert testimony is in direct con- flict, the court will, from its own inspection of the evidence, decide the question in conflict. 314 EXTENSION. Bostoch Y. Ooodrich, 31 Fed. Rep. 316.— But- ler, 1884. 47. An expert need not necessarily be called to .show infringement. Hayes v. Bickelhoupt, 23 Fed. Rep. 183. - Wheeler, 1885. 48. The evidence of experts has only bearing on questions of fact. Questions of law are for the court. Tompkins v. Butterfield, 33 O. G. 758.— Nelson, 1885. 49. The testimony of an expert is to be con- sidered and weighed the same as the testimony of any other witnesses. May v. County of Fond du Lac, 27 Fed. Rep. 691.— Dtbe, 1886. 50. The court spoke of experts as " auxiliary counsellors called experts, whose arguments Upon the law and the facts terminate in a jurat, and are frequently referred to as affidavits." Steam Gauge & Lantern Go. v. Ham M'fg Go., 28 Fed. Rep. 618.— Coxe, 1886. EXTENSION. "Extension" in the Patent Acts. Act approved July 3d, 1832. Section 3. Aiid be it further enacted. That application to Congress to prolong or renew the term of a patent shall be made before its expira- tion, and shall be notified at least once a month, for three montlis before its presentation, in two newspapers printed in the city of Washington, and in one of the newspapers in which the laws of the United States shall be published in the state or territory in which the patentee shall re- side. The petition shall set forth particularly the grounds of the application. It shall be veri- fied by oath ; the evidence in its support may be taken before any judge or justice of the peace ; it shall be accompanied by a statement of the ascertained value of the discovery, invention, or improvement, and of the receipts and expendi- tures of the patentee, so as to exhibit the profit or loss arising therefrom. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 18. And be it furtJier enacted, That whenever any patentee of an invention or dis- covery shall desire an extension of his patent be yond the term of its limitation, he may make application therefor, in writing, to the Commis- sioner of the Patent Office, setting forth the grounds thereof ; and the Commissioner shall, on the applicant's paying the sum of forty dol- lars to the credit of the Treasury, as in the case of an original application for a patent, cause to be published in one or more of the principal newspapers in the city of Washington, and in such other paper or papers as he may deem proper, published in the section of country most interested adversely to the extension of the pat- ent, a notice of such application and of the time and place when and where the same will be con- sidered, that any person may appear and show cause why the extension should not be granted. And the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treas- ury shall constitute a board to hear and decide upon the evidence produced before them both for and against the extension, and shall sit for that purpose at the time and place designated in the published notice thereof. The patentee shall furnish to said board a statement, in'writing, under oath, of the ascertained value of the in- vention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faith- ful account of loss and profit in any manner ac- cruing to him from and by reason of said inven- tion. And if, upon a hearing of the matter, it shall appear to the full and entire satisfaction of said board, having due regard to the public in- terest therein, that it is just and proper that the term of the patent should be extended, by reason of the patentee, without neglect or fault on his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the Commissioner to renew and extend the patent, by making a cer- tificate thereon of such extension, for the term of seven years from and after the expiration of the first term ; which certificate, with a certifi- cate of said board of their judgment and opin- ion, as aforesaid, shall be entered on record in the Patent Office ; and thereupon the said pat- ent shall have the same eflEect in law as though it had been originally granted for the term of twenty-one years. And the benefit of such re- newal shall extend to assignees and grantees of the right to use the thing patented, to the ex- tent of their respective interests therein : Pro- mded, however. That no extension of a patent shall be granted after the expiration of the term for which it was originally issued. [Repealed July 8th, 1870.] Act approved May 27th, 1848. Sec. 1. This section provides " That the power to extend patents, now vested in the board composed of the Secretary of State, Commis- sioner of Patents, and Solicitor of the Treasury, by the eighteenth section of the act approved July fourth, eighteen hundred and thirty-six, respecting the Patent Office, shall hereafter be vested solely in the Commissioner of Patents ; EXTENSION. ' 315 and when an application is made to him for the extension of a patent according to said eighteenth section, and sixty days' notice given thereof, he shall refer the case to the principal examiner havingxharge of the class of inventions to which said case belongs, who shall make full report to said Commissioner of the said case, and particu- larly whether the invention or Improvement se- cured in the patent was new and patentable when patented ; and thereupon the said Com- missioner shall grant or refuse the extension of said patent, upon the same principles and rules that have governed said board ; but no patent shall be extended for a longer term than seven years." [Repealed July 8th, 1870.] Act approved March 2d, 1861. Sec. 12. This section provides that " all ap- plications for the extension of patents shall be filed at least ninety days before the expiration thereof ; and notice of the day set for the hear- ing of the case shall be published, as now re- quired by law, for at least sixty days." Sec. 16. And be it further enacted, That all patents hereafter granted shall remain in force for the term of seventeen years from the date of issue ; and all extension of such patents is here- by prohibited. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 63. And be it further enacted. That where the patentee of any invention or discover}', the patent for which was granted prior to the second day of March, eighteen hundred and sixty-one, shall desire an extension of his patent beyond the original term of its limitation, he shall make ap- plication therefor, in writing, to the Commis- sioner, setting forth the reason why such exten- sion should be granted ; and he shall also furnish a written statement under oath of the ascertained value of the invention or discovery, and of his receipts and expenditures on account thereof, sufficiently in detail to exhibit a true and faithful account of the loss and profit in any manner accruing to him by reason of said in- vention or discovery. And said application shall be filed not more than six months nor less than ninety days before the expiration of the original term of the patent ; and no extension shall be granted ^fter the expiration of said original term. . . . Sec. 64. And be it further enacted. That upon the receipt of such application, and the payment of the duty required by law, the Commissioner shall cause to be published in one newspaper in the city of Washington, and in such other papers published in the section of country most inter- ested adversely to the extension of the patent as he may deem proper, for at least sixty days prior to the day set for hearing the case, a notice of such application, and of the time and place when and where the same will be considered, that any person may appear and show cause why the ex- tension should not be granted. . . . Sec. 65. And he it further enacted, That on the publication of such notice, the Commissioner shall refer the case to the principal examiner having charge of the class of inventions to which it belongs, who shall make to said Commissioner a full report of the case, and particularly whether the invention or discovery was new and patent, able when the original patent was granted. . . . Sec 66. Be it further enacted. That the Com- missioner shall, at the time and place designated in the published notice, hear and decide upon the evidence produced both for and against the extension ; and if it shall appear to his satisfac- tion that the patentee, without neglect or fault on his part, has failed to obtain from the use and sale of his invention or discovery a reasonable remuneration for the time, ingenuity, and ex- pense bestowed upon it, and the introduction of it into use, and that it is just and proper, having due regard to the public interest, that the term of the patent should be extended, the said Com- missioner shall make a certificate thereon, re- newing and extending the said patent for the term of seven years from the expiration of the first term, which certificate shall be recorded in the Patent Office, and thereupon the said patent shall have the same effect in law as though it had been originally granted for twenty-one years. . Sec. 67. And be it further enacted. That the benefit of the extension of a patent shaU, extend to the assignees and grantees of the right to use the thing patented to the extent of their interest therein. Sec 74. And be it further enacted, That pat- entees of designs issued prior to March second, eighteen hundred and sixty-one, shall be entitled to extension of their respective patents for the term of seven years, in the same manner and under the same restrictions as are provided for the extension of patents for inventions or discov- eries issued prior to the second day of March, eighteen hundred and sixty-one. [Repealed June 22d, 1874.] Act approved June 33d, 1874. Sec 4934. Where the patentee of any inven- tion or discovery, the patent for which was granted prior to the second day of March, eigh- teen hundred and sixty- one, shall desire an ex- tension of this patent beyond the original term of its limitation, he shall make application there- for, in writing, to the Commissioner of Patents, 316 EXTENSION. setting forth the reasons why such extension | should be granted ; and he shall also furnish a i ■written statement under oath of the ascertained value of the invention or discovery, and of his re- ceipts and expenditures on account thereof, suffi- ciently in detail to exhibit a true and faithful ac- count of the loss and profit in any manner accru- ing to him by reason of the invention or discovery. Such application shall be filed not more than six months nor less than ninety days before the ex- piration of the original term of the patent ; and no extension shall be granted after the expira- tion of the original term. Sec. 4928. The benefit of the extension of a patent shall extend to the assignees and grantees of the right to use the thing patented, to the ex- tent of their interest therein. Sec. 4932. Patentees of designs issued prior to the second day of March, eighteen hundred and sixty-one, shall be entitled to extension of their respective patents for the term of seven years in the same manner and under the same restrictions as are provided for the extension of patents for inventions or discoveries issued prior to the second day of March, eighteen hundred and sixty-one. Cases. 1 . Congress has the power of extending letters- patent after they have once expired. Ekans v. BoUnson, 1 Car. L. R. 209. — Doval and Hous- ton, 1813. 2. " The grant of an exclusive privilege to an invention for a limited time" does not imply " a binding and irrevocable contract with the peo- ple that, after the expiration of the period, the invention shall become public property. ' ' Bvans V. Eaton, 1 Peters' C. C. 322.— Wash. 1816. 3. If a patent were held to imply a contract between the Government and the people that the invention shall become public property at the expiration of the patent, yet Congress has power to pass laws violating contracts and to create a monopoly of the invention. — lb. 4. Congress passed an act extending Thomas Blanchard's patent " for the term of fourteen years from the twelfth Aaj oi January," IS'dl, for " a maeldne for turning and cutting irregu- lar forms, a description of which is given in the schedule or ■ specification annexed to letters-pat- ent granted to the said Thomas Blanchard for the said invention of the twelfth day of January, in the year eighteen hundred and twenty. ' ' No letters-patent had been granted to Thomas Blanchard the twelfth day of January, 1820, but had been granted him on the twentieth day of January, the same year, wherein the invention was entitled ' ' An Engine for Turning or Cutting Irregular Forms," etc. The variation was held to be fatal. Blanchard v. Sprague, 8 Sumner, 279.— Story, 1838. 5. Congress has power to give renewed patents retroactive eifect. Blanchard v. Spra^ue, 2 Story, 164.— Story, 1839. 6. An assignee or grantee under an original patent does not " acquire any right under the extended patent unless such right was expressly conveyed to him by the patentee." Woodwm-th V. Sherman, 3 Story, 171.— Story, 1844. 7. The grant of the extension of a patent to an administrator is within the statute of 1836. — WasWmrn et al. v. Gould, 3 Story, 122. — Story, 1844. 8. Where a certified copy of record shows the grant of an extension, it will be presumed that all the preliminary formalities for procuring the extension were complied with. Brooks et al. v. Jenkins et al., 3 McLean, 432.— McLean, 1844. 9. Extension of a patent in the name of the administrator is within the spirit and policy of the act of 1836.— J6. 10. Under the act of 1836 an administrator was competent to apply for and receive a pat- ent. Woodworth v. Sherman, 3 Story, 171. — Story, 1844. 11. An assigninent of a patent by the inventor does not carry the extension thereof to an as- signee under the original term. Brooks et al. v. Bicknell et al., 4 McLean, 64. — McLean, 1845. 12. By a clause in a mutual deed of assign- ment, it was agreed " that any improvement in either of the patents mutually assigned in the machinery, or any alteration or renewal of the same, shall accrue to the benefit of the respec- tive parties in interest, and may be applied and used within their respective districts as therein designated." This was held to convey an inter- est in extensions. Wilson v. Turner et al., Taney Dec. 278.— Taney, 1845. 13. The act of July 4th, 1836, provides that the benefit of renewal shall extend to the a-s- signees and grantees of the right to use the thing patented, to the extent of their respective inter- ests therein. " It means to provide that as- signees and grantees shall share with the pat- entees the benefit of the renewal according to the interests which they had respectively acquired in the thing patented within particular districts of the country, or for their own individual use." — lb. 14. " Congress has not only secured to the in- ventor . . . absolute indefeasible interest in the property in the subject of the invention for the fourteen years, but has also agreed that upon EXTENSION. 317 oortain conditions occurring, to be shown be- fore the expiration of this period, . . . this right of property- in the invention shall be continued for the further term of seven years. Subject to this condition, the right of property in the second term is as perfect, to the extent of the interest, as the right of property in the first. " Wilson v. Bousseau et al., 4 Howard, 646. — Sup. Ct. 1846. 15. The right to an extension is to be dealt with after the decease of the patentee, the same as an interest In the original patent, and passes, with other rights of property belonging to him, to the personal representatives as part of the eHects of the estate. — 1 b. 16. An administrator may properly apply for and receive an extension of the letters-patent of the deceased.^JS. 17. A statute contained the following : "And the benefit of such renewal shall extend to as- signees and grantees of the right to use the thing patented to the extent of their respective interests therein." Thereof the court said : " The clause in question, upon a true and reasonable inter- pretation, does not operate to vest the assignees and grantees named therein with any exclusive privileges whatever in the extended term." " This clause does not apply to those who have provided themselves with the patented article for use, or as a matter of trade after the original monopoly ceased, but to those who were in the use and enjoyment of the patented thing, under right originally purchased from the patentee. " —n. 18. The decision of a Patent Office tribunal upon an application for an extension of a patent, under Section 18 of the act of 1836, is not con- clusive upon the question of their jurisdiction to act in a different tribunal. — li. 19. A patent may be reissued during its ex- tended term. — lb. 20. Where a licensee's power gave him the right to make and use and vend one machine during an original term, it was held that he had the right to continue the use of the particular machine in existence at the time of the grant of an extended term. Woodworth v. Curtis, 3 Woodbury & Minott, 534.— WooDBnET, 1847. 21. In an act of Congress extending a patent it was provided " that all rights and privileges heretofore granted by .said patentee to make, construct, or vend the said invention, and not forfeited by the purchasers or grantees, shall inure to and be enjoyed by such purchasers or grantees respectively as fully and upon the same conditions during the period hereby grant- ed as for the term that did exist when such sale or grant was made. " The inventor had previously made an assign- ment " of all his right to the invention covered by the patent under the said patent and any other patent issued or to be issued for the same invention, with all the rights he might have en- joyed if the assignment had not been made." It was held that the assignee took the extended term, and that Congress had the constitutional right to extend a grant of patent for the benefit of an assignee. Blanehard's OwnMock Turning Factory v. Warner, 1 Blatch. 358.— Nelson, 1848. 33. A declaration averred " that before the expiration of the term for which the original patent was granted, to wit, October 4th, 1843, it was in due form of law extended for the term of seven years from and after October 19th, 1843 ;" being demurred to, it was held sufficient in form. Phelps v. Comstock, 4 McLean, 353. — McLban, 1848. 33. Where an assignment extended " to the full end of the term or terms for which the let- ters-patent are or may be granted for said im- provements as fully and entirely as the same would have been enjoyed by me had this as- signment not been made," it was held to carry the extended term. — lb. 34. An assignment conveyed " all the right, title, and interest which said heirs had in said in- vention and improvement, as secured to them by said letters -patent for the whole of the United States, with certain exceptions, and for the use and behoof of their legal representatives for which letters-patent are or may be granted for said improvement as fully and entirely as the same would have been held and enjoyed by said heirs had that assignment and sale not been made." The court held " that this was intend- ed to transfer the right under a renewal of the patent." Case v. Eedfield et al., 4 McLean, 536. — Huntington, 1849. 35. Where, during a certain term of a patent, machines were constructed and used under a right acquired from the patentee, and were in use at the expiration of that term, the possessor had a right to continue their use during an ex- tension of the patent granted under the general statute. Woodworth et al. v. Cook, 3 Blatch. 151.— Nelson, 1850. 26. A conveyance under a patent carried the right "during the said extension," etc., and vested the grantee " with an exclusive right to construct and use the six machines during the terms aforesaid." The conveyance concluded as follows : '■ It is understood that the said Cooke has all the rights I have in the county of Wash- ington, under said patent, to use six machines 318 EXTENSION. and no more." The patent was afterward ex- tended by special act of Congress. It was held that the grantee took no rights under said ex- tended term. Gibson v. Cooke, 2 Blatch. 144. — Nblson, 1850. 37'. Even though a conveyance under a cer- tain term of the patent might he such as to be intended to convey an interest in another and . extended term of the same patent, yet if that ex- tension is afterward granted and duly assigned to a purchaser without notice, the latter will take a good title. — Tb. 28. It is within the constitutional power of Congress to specially extend a single patent. Bloomer v. StoUey, 5 McLean, 158.— McLean, 1850. 29. "A retrospective law is not necessarily unconstitutional. No state can impair the ob- ligations of a contract ; but the inhibition does not apply to the general Government." Therefore a licensee under a patent does not necessarily remain a licensee under an extended term created by specific act of Congress. — lb. 30. After the Woodworth planer patent had been once extended under the statute, it was subsequently extended by act of Congress. A licensee under the statutory extension claimed that his license had force under the Congres- sional extension. The court held otherwise. Gibson v. Gifford, 1 Blatch. 529. -Nblson, 1850. 31. " The reason for conferring extensions generally by the officers of the Government who ai-e authorized to do it is to reward the party, in some degree, for his skill and genius when he has not, to appearances, been already rewarded. ' ' Colt V. Massachusetts Arms Co., 1 Fish. P. C. 108.— Woodbury, 18^1. 83. By act of Congress of May 27th, 1848, the powers of extension theretofore vested in a board composed of the Secretary of State, Commis- sioner of Patents, and the Solicitor of the Treas- ury, were given to the Commissioner of Patents. It was held that proceedings begun before the passage of the act properly proceeded without interruption before the Commissioner after the passage of the act. Colt v. Toung et al., 2 Blatch. 471. —Nelson, 1852. 33. The act of the Commissioner of Patents in granting an extension is conclusive as to the proceedings except perhaps in case of fraud.— J6. 84. Where a patent has been extended under a special act of Congress, and a question arises with reference thereto, in determining this ques- tion there must be taken into consideration not only the special act, but also the general laws of Congress in relation to patents and the special acts which have from time to time been passed in favor of the particular patentee. Bloomer v. McQuewan et al., 14 Howard, 539.— Bup. Ct. 1853. 85. Rights to make and vend a patented ma- chine acquired under an original term expire with the original term ; he who buys outright such a patent during the original term may use it during the extended term.' — lb. 36. "A special act of Congress in favor of a patentee, extending the time beyond that origi- nally limited, must be considered as ingrafted on the general law. " He who purchases for use a patented machine during an original term of the patent has a right to use it during an extended term acquired through a special act of Con- gress. — lb. 37. " Congress undoubtedly has power to pro- mote the progress of science and the useful artfe by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries. " But it does not follow that Congress may, from time to time, as often as it thinks proper, authorize an inventor to recall rights which he had granted to others, or reinvest in him rights of property which he had before conveyed for a valuable and fair consideration." — lb. 38. The term "renewal" may be properly applied to an extension. Pitts et al. v. Hall, 3 Blatch. 201.— Hall, 1854. 39. A patentee sold one of his patented ma- chines during the original term of his patent. It was held that he could not stop the use of that machine during the extended term. Blancliard V. Wliitney, 3 Blatch. 307.— Nelson, 1855. 40. "As respects the rights of a patentee as against those using the patented article, there is a manifest distinction between a case where the title to a machine is derived from a person who has purchased simply a right or license to man- ufacture it under the patent, and a case where the purchase of the article is made directly from the patentee. In one case, the patentee has parted only with his interest in the term of the patept, which is limited ; in the other, he has sold the machine itself, with all the rights ap- pertaining to his title as vendor, and, of course, without any necessary limitation of its use or enjoyment. ' ' — lb. 41. The right to a future extension is a proper subject of a contract of sale. Clum v. Brewer etal., 3 Curtis' C. C. 506.— Ctjetib, 1855. 43. "A sale of an invention before letters- patent are obtained does not necessarily carry with it the exclusive right to an extended term." -lb. 43. " Under the provision of Section 18 of EXTENSION. 319 the act of July 4th, 1836," "the right to use the thing patented was continued to the assignees and grantees of such right for the original term, without regard to the question whether the pat- ent was for a process or a machine, or to the question whether the particular machine was or was not in existence at the time the original term expired." Bay v. Union Imlia Bubber Co., S Blatch. 488— Hall, 1856. 44. " Congress, in renewing patents, has been quite careful to protect the rights and interest of assignees and grantees of the right to use the thing patented which existed independently of the ownership of the machines patented, as to protect the rights and interests of those who merely owned such machines, and had no right to use the thing patented other than that im- pliedly granted by the sale of iuch patented ma- chines."— /ft. 45. The word " renewed " may be construed to mean " extended." Day et al. v. Oary et al., 1 Fish. P. 0. 424.— Ingbbsoll, 1859. 46. The word "renewed" may properly be taken to denote an extended term of a patent. Goodyear et al. v. Gary et al., 4 Blatch. 271. — Ingbrsoll, 1859. 47. A party who purchases a patented ma chine and uses it during the original term may continue to use the machine during the extended term. Ohaffee y. Boston Belting Co., 22 How- ard, 217.-STJP. Ct. 1859. 48. " Patentees acquire the exclusive right to make and use and vend to others to be used, their patented inventions for the period of time specified in the patent, but when they have made and vended to others to be used one or more of the things patented, to that extent they have parted with their exclusive right. They are en- titled to but one royalty for a patented machine, and, consequently, when a patentee has himself constructed the machine and sold it. or author- ized another to construct and sell it, or to con- struct and use and operate it, and the considera- tion has been paid to him for the right, he has then, to that' extent, parted with his monopoly and ceased to have any interest whatever in the machine so sold or so authorized to be construct- ed and operated. Where such circumstances appear, the owner of the machine, whether he built it or purchased it, if he has also acquired the right to use and operate it during the life- time of the patent, may continue to use it until it is worn out, in spite of any and every extension subsequently obtained by the patentee or his as signs." Bloomer v. Millinger, 1 Wall. 340. — Sup. Ct. 1863. 49. In a suit for an infringement of an extend- ed patent, the defence cannot be made that the extension was procured by fraud. The decision of the Commissioner is to be regarded as final in collateral proceedings. Ooodyear et al. v. Provi- dence Rubber Co. et al., 2 Clifford, 351.— Clif- ford, 1864. 50. " Where the imputation of fraud arises in a proceeding between the Government and the patentee, and a third person whose rights of property were directly involved in the question of extension, proof of fraud in obtaining the ex- tension is sufficient to defeat the patent ; but the proof, to avail the party making the imputation, must be clear and satisfactory." — lb. 51. A party held a license upon royalty under an original patent which by its language compre- hended the extended term. The patent being extended the licensee contended he had the right to use the patent without compensation after the expiration of the original term. The court held the license in force during the extended term and held defendant to pay the royalty. Union M'fg Go. V. Lounsbury, 43 Barbour, 135. — Clbrkb, 1864. 53. A patent owner A, made to the defendant B, a grant of a territorial right, conveying the right " to the utmost and fullest extent as to duration, manner of enjoyment, or otherwise, howsoever that he is or may be entitled to under said letters-patent." This was held to carry an equitable right under the extended term of the patent. Chase et al. v. Walker et al., 3 Pish. P. C. 130.~Cadwaladbr, 1866. 53. Extension adds to the presumption of the validity of a patent. Swift et al. v. Whisen et al., 3 Fish. P. C. 843. -Lbavitt, 1867. 54. The doctrine established in the different cases decided by the courts under Section 18 of the act of July 4th, 1836, " is that an assignee of a patent, holding, at the expiration of the first term, a right during that term to make and use the thing patented, may, during the time of its subsequent extension, continue to use it and even repair it for use, but that he cannot make it for use or for any other purpose." Wood v. Michi- gan Soutliern & Northern Indiana B. E. Co. , 3 Bissell, 63.— McDonald, 1868. 55. An assignment under the original term of a patent was : " For and during the term for which said letters-patent are or may be granted." This was held not to convey to the assignee a right under the extended term. — lb. 56. A license granted the right " for and dur- ing the term for which said letters-patent are or may be granted." This was held not to give a right under the extended term of the patent. 320 EXTENSION". Hodge et al. v. Hudson Biiier B. B. Co., 6 Blatch. 85. — Blatchfokd, 1868. 57. The meaning of Section 18 of the act of July 4th, 1836, is that he who lawfully uses a patented machine during the original term of the patent has the right to continue the use of that specific machine until it is worn out, under the extension of the patent. — lb. 58. It is a " settled presumption of law, in re- spect to every license under a patent, that the parties deal in regard only to the term existing when the license is given, unless an express pro- vision is inserted looking for a further interest, and . . . that, unless there be such a stipulation showing that the parties contemplated an exten- sion, the instrument and each and all of its pro- visions will be construed as relating to the then existing term only." Hodge et al. v. Hudson Biver B. B. Co., 6 Blatch. 165. — Blatchford, 1868. 59. The patentee who sells his patent, which is then reissued, may have the original extended in place of the reissue. Potter et al. v. Brauns- dorfet al., 7 Blatch. 97.— Blatchford, 1869. 60. The Commissioner's decision upon an ex- tension " must be held conclusive until the pat- ent is impeached in a proceeding had directly for that purpose according to the rules which define the remedy, as shown by the precedents and authorities upon the subject." Bubber Co. V. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 61. An original patent was reissued. The pat- entee did not have any interest in the reissue. The original patent was extended to the patentee and the. extension held proper. Grompton v. Belknap Mills et al., 3 Fish. P. C. 536.— Clakk, 1869. 62. In extending a patent that has been reis- sued the notice need not state specially a reissue. — /*. 63. Fraud in the obtaining of an extension cannot be inquired into in an action for infringe- ment. — lb. 64. " The extension of the patent by the Com- missioner must be treated as a judicial act, not to be impeached except in some direct proceed- ing duly instituted for that purpose." Am. Wood-Paper Co. v. Qlens Falls Paper Co., 8 Blatch. 513.— "Woodruff, 1870. 65. A suit for infringement being based upon an extended patent, defendant contended that the extension was procured by fraud, because the parties had agreed to a postponement of the hearing, and, before the day thus agreed upon had arrived, the Commissioner heard the case ex parte and granted the extension. The court held othei-wise. — lb. 66. Congress has the power, after a patent has expired, to provide for its extension. Jordan v. Dobson etal., 3 Abb. U. S. 398.— Strong, 1870. 67. " A special act of Congress providing for an extension, is to be considered as engrafted on the general law pertaining to extensions." — lb. 68. ' ' The action of the Commissioner in grant- ing an extension is conclusive evidence of all the - facts he is required to find." — lb. 69. Where a person purchases a machine under the original term of a patent, and there- fore has a right to use it during the extended term, he may, during the extended term, replace old parts which become worn out with new parts. Warrington et al. v. Water Commission- ers of Detroit, 4 Fish. P. C. 216. — Longtbar, 1870. 70. In an action for infringement of an ex- tended patent, the validity of the extension can- not be inquired into. Whitney v. Mowry, 4 Fish. P. C. 307.— SwAYNB, 1870. •71. A grant under the original term of certain letters-patent had an habendum clause as fol- lows : ' ' The same to be held and enjoyed by the said Taylor, for the use and behoof of him and his legal representatives, to the full extent of the term for which the said letters-patent are or may be granted." This was held not to include the extended term. Jenkins v. Nicolson Pavement Co., 1 Abb. U. S. 567.— Sawyer, 1870. 73. " It is quite clear that an assignment of an interest in an invention, and letters-patent there- for, before the expiration of the original term, carries with it no interest in a subsequently ex- tended term, unless it contains a specific provi- sion to that effect." — lb. 73. In computing the ninety days' notice upon application for extension of a patent, the day on which the application is filed is to be counted. Johnson V. McCullough et al., 4 Fish. P. C. 170. —Giles, 1870. 74. A deed from one Howe recited that he had obtained two patents, and then proceeded: "I have assigned, sold, and set over, and do hereby assign, sell, and set over, all the right, title, and interest which I have in said invention, as se- cured to me by said letters-patent, and also all right, title, and interest which may be secured to me for al! alterations and improvements on the same /row time to tiine, for, to, and in the fol- lowing States — viz., etc. ? . . . the same to be held and enjoyed by the said I. R. Trimble for his own use and behoof, and for the use and be- hoof of his legal representatives to the full end of the term for which said letters-patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had EXTENSION. 321 this assignment and sale not have been made. " It was held that under this assignment Trimble took title under the extended term. Bailroad Co. V. TnmbU, 10 Wall. 367.— Sup. Ct. 1870. 75. The expiration of an English patent for the same invention forms no objection to an ex- tension of the home patent. Tilghman v. Mit- cJiell, 9 Blatch. 18.— Blatchford, 1871. 76. By the act of July 4th, 1836, the chief clerk of the Patent Office was made acting Com- missioner in the necessary absence of his chief. By act approved July 33d, 1868, this duty of acting Commissioner was devolved upon the oldest examiner. July 24th, 1868, the chief clerk acting as Commissioner indorsed a pat- ent as extended. The extension was held in- valid. American Wood-Paper Co. v. Olens Falls Paper Co., 8 Blatch. 513.— Woodrupf, 1871. 77. " Where a machine is the subject of let- ters-patent, and is in lawful use by any party at the expiration of the original term of the patent, such a party may continue to use the identical machine as long as it shall last, notwithstanding the extension of such letters-patent beyond the original term." Hawley v. Mitchell et al., 1 Holmes, 43.— Shbplbt, 1871. 78. " No words of limitation, however clearly expressed, confining an qsaignee's right to the original term, will have any effect to deprive the assignee or his assigns of the right to use during the extended term of the patent, machines law- fully constructed and used by them during the original term. " — lb. 79. A licensee's riglit under the original term of a patent was specifically limited to the orig- inal term. He sold machines and the buyers at- tempted to use them in the extended term. The buyers were held to be infringers. — lb. 80. A conveyance under a patent recited the invention and agreement of the grantee to pur- chase the right to use it in the city of San Fran- cisco, and then conveyed to the grantee all the title and interest which the grantor had in the invention and letters-patent for and in the said city, to be enjoyed by the grantee and his legal representatives to the full end of the term, " for which the said letters are or may be granted." Held to include the extended term.— /J. 81. " A transfer of an interest in a subsisting patent will not extend beyond the term of the patent, unless there are words that indicate an intention to convey more than a present inter- est." Wetlmrill et al. v. Passaic Zinc Co. et al., 9 Phil. 385.— MoKbnnan, 1873. 83. The words of a license were, in part, " with rights to use all his patents and processes for the manufacture of zinc oxide, metallic zinc. retorts, etc. , which said Wetherill novi has or has in contemplation to obtain. ' ' Thereof the court said : ' ' The significance of the words ' now has or has in contemplation to obtain, ' is merely to individuate the patents which the contract was intended to embrace, and has no reference to the renewal or extension of such patents. ' ' — lb. 83. Where a licensee's right expires with the original term of a patent, the right to the use of any machines derived from him ceases then. — lb. 84. As to machines made unler an assignment or grant under an original patent " while the right to the use of the invention expires witli the end of the term of the original patent, the riglit to the continued use of the machine which em- bodies it is protected. The law did not intcndl to revive an assignment or grant which expired with the term of the original patent, but to pro- tect a species of tangible property sold by the patentee, the value of which depended chiefly upon the owner's right to use it, and which, without some saving provision, would fall with' in the grasp of tlie exclusive right vested in the patentee by the extension."— J J. 85. As to Section 18 of the act of 1836, " this saving clause is applicable only to inventions which are susceptible of embodiment in a sub- stantial and tangible form, and not to those which consist in a formula for producing pre- scribed results, and when those results are ob- tained there is an end of the thing patented, and which, as often as it is employed in practice, in- volves the renewed use or reproduction of the entire inventioQ.":— /J. 86. As regards the principle last stated, it is not changed by the fact that the process requires the use of a peculiar machine or apparatus for its practice. — lb. 87. Where a suit is brought upon a patent which, pending the suit is extended, an injunc- tion cannot be awarded. Benwick et al. v. Pond, 10 Blatch. 39.— Blatchford, 1873. 88. An assignment conveyed " all the right, title, and interest which I (the patentee) have in the said inventions, or either of them, as se- cured to me by said letters-patent, ... to the full end of the term for which said letters-patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not have been made." The court held that : " The words ' to the full end of the term for which the said let- ters-patent are or may be granted, ' necessarily import an intention to convey both a present and a future interest." Buggies y. Eddy et al., 10 Blatch. 53.— WooDBUPP, 1873. 323 EXTENSION. 89. If there is any fraud in the procurement of an extension, it does not lie with the patentee or his assigns to take advantage of that fraud. —n. 90. A wrjtten conveyance set out that the in- ventors : " Have applied or intend to apply, for letters-patent," and it conveyed " all the right, title, and interest whatsoever, which we now have, or, by letters-patent, would be entitled to have and possess, in the aforesaid invention, the said invention being described in the Specification as prepared and executed by us, for the obtaining of said letters-patent, the whole to be held and enjoyed by the said Henry Tanner and his legal representatives, to the full extent and manner would have been, or could be held and enjoyed by us, had this assignment not been made ; and we do, by these presents, authorize the Com- missioner of Patents to issue the said letters-pat- ent to the said Henry Tanner and his legal repre- sentatives, as the assignee of our whole right and title to the same, and to the new invention afore- said." This was held not to apply to the ex- tended term. Mowry et al. v. Grand Street & Newtown Railroad Oo., 10 Blatch. 89. — Bene- dict, 1873. 91. "An assignment of the invention, with- out words importing an intention to convey both a present and a future interest, will not pass the right to an extension." — lb. 93. An assignment under a patent conveyed the right " to the full end of the term for which said letters-patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not been mads." This was held to apply to an extended term. Thayer et al. v. Wales et al., 5 Fish. P. C. 448. —Benedict, 1873. 93. " Purchasers of the exclusive privilege of making or vending ,the patented machine hold the whole or a portion of the franchise which the patent secures, depending upon the nature of the conveyance, and of course the interest which the purchaser acquires terminates at the time limited for its continuance by the law which created the franchise, unless it is expres.sly stipu- lated to the contrary. But the purchaser of the implement or machine for the purpose of using it in the ordinary pursuits of life stands on differ- ent grounds, as he does not acquire any right to construct another machine either for his own use or to be vended to another for any purpose. Complete title to the implement or machine pur- chased becomes vested in the vendee by the sale and purchase, but he acquires no portion of the franchise, as the machine, when it rightfully passes from the patentee to the purchaser, ceases to be within the limits of the monopoly. " Mit- chell V. Hawley, 16 Wall. 544.— S0P. Ct. 1873. 94. A " conveyance of license, subject to cer- tain restrictions and limitations, was made by the patentee, of the exclusive right to make and use ' and license to others th^ right to use tlie said machines ' in the States of Massachusetts and New Hampshire, during the remainder of the original term of said letters-patent, it being ex- pressly stipulated in the instrument of convey- ance that the licensee ' shall not, in any way or form, dispose of, sell, or grant, any license to use the said machines beyond the expiration ' of the original term." This was held to carry the right to the extended term. ^76. 95. Where a patent had been reissued in di- visions, and only one division extended, it was held that " nothing fell into the public domain on the expiration of that patent except the special device claimed in it, and that the patent did not include the devices embraced in the other reissues upon which this suit was brought.'' Wheeler v. McGormick, 11 Blatch. 834. — Wood- RtrpF, 1873. 96. Although a bill of complaint may allege that a patent was extended by the Commissioner, an extension by an acting Commissioner fulfils the averment. Dorsey Harvester Bewlving-Bake Go. V. Marsh et al., 6 Fish. P. C. 387.— Mc- Kbnnan, 1873. 97. " The granting of an extended patent is a judicial act."— Jft. 98. " The extension must be granted before the term of the original p^ent expires, but when it is granted, in apparent conformity to the act of Congress, the decision of the officer has the attributes of a final judgment. It is not subject to repeal or revision. ' ' — lb. 99. As to " a patentee, when he has himself constructed a machine, and sold it without any conditions, or authorized another to construct, sell, and deliver it, or to construct, and use, and operate it, without any conditions, and the con- sideration has been paid to him for the thing patented, the rule is well established that the patentee must be understood to have parted to that extent with all his exclusive right, and that he ceases to have any interest whatever in the patented machine so sold and delivered, or authorized to be constructed and operated." Mitchell et al. v. Hawley, 16 Wall. 544.— Clif- ford, 1873. 100. " The owner of the machine, whether he built it or purchased it, if he has also acquired the right to. use and operate it during the life- time of the patent, may continue to use it until it is worn out, in spite of any and every exten- EXTENSION. 323 sion subsequently obtained by the patentee or his assigns." — /J. 101. "Purchasers of the exclusive privilege of making or vending the patented machine, hold the whole or, a portion of the franchise ■which the patent secures, depending upon the nature of the conveyance, and of course the interest.which the purchaser acquires terminates at the time limited for its continuance by the law which created the franchise, unless it is ex- pressly stipulated to the contrary." — lb. 102. " Where the saje is absolute, and with- out any conditions, the rale is well settled that the purchaser may continue to use the imple- ment or machine purchased until it is worn out, or he may repair it or improve upon it as he pleases, in the same manner as if dealiiig with property of any other kind." — lb. 103. A conveyance under a patent stipulated that the licensee " ' shall not, in any way or form, dispose of, sell, or grant and license to use the said machines beyond the expiration ' of the original term. The licensee sold machines and authorized the purchasers ' to run and use two sets (four machines) for felting hats, in said town of Haverhill, under Taylor's patent, bear- ing date as specified in the original letters-pat- ent. ' " As to these machines the court held that they were not authorized to be used under the extended term of the patent. — lb. 104. " It is well settled that a patent from the Government cannot, in a collateral proceeding, be impeached for fraud in procuring its issue ; this can only be done in a direct proceeding to set it aside." (Said of an extended patent.) Oear et al. v. Ch'osveiwr et al., 1 Holmes, 315. — Sheplbt, 1873. 105. In an action for infringement of a pat- ent, the defence cannot be made that the notice required by law to be published, as to the hear- ing before the Commissioner of Patents, was fraudulently suppressed, and never published in the manner required by law. — lb. 106. An inventor made an assignment of an extended term of his patent before the same was granted. It was held to become operative upon the grant of the extension. In this case the pat- entee was interested to the extent of one half of the proceeds from sales or use of the patented invention. — lb. 107. "The act of Congress authorizing ex- tensions of patents, undoubtedly contemplated a benefit to the patentee, not yet sufficiently re- warded by the receipts from his patent. The policy of the law would seem to require that the patentee applying for the extension should him- self have an interest. An equitable interest is sufficient for this purpose, the court having de- cided that he may convey the legal interest." —lb. 108. An assignment of a patent carried the right " to the full end of the term for which said letters-patent are or may be granted." This was held not to apply to the extended term. — lb. 109. " An assignment of an interest in an in- vention, and letters-patent therefor, before the expiration of the original term, does not carry with it any interest in a subsequently extended term, unless the assignment contains a specific provision to that effect. "—/J. 110. After the original term of a patent has expired, injunction cannot be granted in a suit based thereon, although the patent has sinca been extended. McComi v. Beard, 10 Blatch. 350.— Blatchfokd, 1873. 111. A party ignorantly bought and used an infringing machine. Subsequently the same party bought a grant under the patent. It was held that the machine might be freely used dur- ing the extended term of the patent. Eunson et al. V. Dodge, 18 Wall. 414. -Sup. Ct. 1873. 113. " The patent act of 1836 gives to the as- signee of the patent, during the original term, the right to continue during the extended term the use of the machine used by him during the original term." — lb. 113. Where a patent has been extended pend- ing a suit on the originkl patent a supplemental bill needs to be filed in order to warrant injunc- tion. Booths. Parks, 1 Flippin, 381. — Wblker, 1874. 114. " Neither reissued nor extended patents can be abrogated by an infringer in a suit against him to recover damages for unlawfully making, using, or selling a patented invention, upon the ground that the letters-patent were procured by fraud in prosecuting the application for the same before the Commissioner. ' ' Milligan & Higgivs Glue Oo. V. TJ-pUn, 4 Cliff. 337.— Clitpord, 1874. 115. The operative words in an assignment were : " I have assigned, sold, and set over, in trust, and do hereby sell and set over, in trust, all my right, title, and interest of, in, and to the afore- said reissued letters-patent, and the invention thereby secured. " The assignee gave a license " to be exercised during the unexpired terms for which the said patents are granted and may be hereafter extended, on the terms and conditions hereinafter specified." These were held not to have any effect under the extended term of the patent. Waterman v. Wallace & Sons et al., 13 Blatch. 138.- Shipman, 1875. 116. "A sale of 'the invention' does not necessarily carry with it the exclusive right to 324 EXTENSION. the extended term, but ' where an inventor has, in terms, sold to another person a part of his in- vention, he has done that which is quite con- sistent with an intent to have that other person participate in all the rights which he, as inventor, can acquire by law.' " — lb. 117. " An assignment of the invention, after a patent has been issued, without any other lan- guage to indicate the intention of the parties, does not import a conveyance of the right to an ex- tended term." — lb. 118. During the original term of a patent for a binding attachment for sewing-machines, the owner authorized all who should own a certain sewing-machine to use such binder upon it. During the extended term another party, owner of the extended term, sought to prevent the fur- ther use of such binders. The court held that such use could not be prevented. Wooster v. Seidetiberg et al., 13 Blatch. 88.— Shipmajst, 1875. 119. A, the assignee of a patent, sold to B the exclusive right to the use of the patented ma- chines in the State of Ohio. B sold the same right to C. B then assumed to buy the patent- ed machines of A for use during the extended term. A subsequently held the extended term for a short time. B, being sued for infringement during the extended term, contended that the complainants who claimed through A were estopped from proceeding against B. It was held that B's purchase from A was in fraud of complainants' rights, and that B could not use the machines during the extended term. Union Paper-Bag Machine Co. et al. v. Nixon et al., 1 Flippin, 491. — Emmons and Swing, 1876. 130. "It is not a fair construction of the as- signment of a patent that the assignee shall first assign the entire right for a particular territory, and get its whole value from his vendee, and after having received thus all the benefit he was entitled to under the transfer, sell single ma- chines to be used in the same territory during the extended term. He will in this mode obtain the value of a right never conveyed to him. ' ' —lb. 131. The right to use a patented machine after the expiration of the original term is an incident to the primal right to use it during the original term, and if that fails on account of fraud the incident fails with it. — lb. 133. A license which is to remain in force "until the full expiration of the contract for which said letters-patent have been granted, and during such period as the same may be hereafter renewed or extended," has life and force under an extended term of the patent. Hammond et al. V. Mason & Hamdin Organ Co., 93 U. S. 734, —Sup. Ct. 1876. 133. During the original term of a patent for a furnace, such a furnace was constructed under a license. It was held that the defendants' use might be continued during' the extended term of the patent. Black et al. v. Hubbard et al., 3 Banning & Arden, 39. — Whebleb, 1877. 134. The legal title to an extension of a patent was in one party. The invention was joint. The administrator of one of the inventors, and the other inventor in person, petitioned for the extension ; the grant of the extension inured to their benefit and was held proper. Sayles v. Dubugue & Sioux City R. R. Co., 5 Dillon, 561. — Dillon and Love, 1878. 135. In counting the ninety days prior to ex- piration of patent required in an application for extension, the day of filing the application is to be counted. Johnson v. Onion et al., 3 Hughes, 390.— Giles, 1878. 136. An assignment of an " invention" before patent issues, carries with it the right to the ex- tended term. Hendrie v. Sayles, 98 U. S. 546. -Clifford, 1878. 137. " Extensions, when they were authorized here, were inchoate rights under the law, and were so far property that such a right could be sold and conveyed by an instrument of sufficient scope to show clearly that the grantor intended to convey the estate absolutely or upon condi- tion. " Henry v. Providence Tool Co., 3 Banning & Arden, 501. -Clifford, 1878. 138. " There is a wide difference between the legal discretion which the Commissioner of Pat- ents exercised under the act of Congress grant- ing extensions, and the prerogative power exer- cised by the Crown in granting what is called prolongations of original patents." — lb. 139. " Although the statutes . . . seemed to contemplate that extensions should be granted only to inventors, for their own benefit, or to their personal representatives, there is no doubt under the construction which has been given to them, but that, by appropriate instruments and words of conveyance, they could be conveyed wholly in advance. . . . Nor but that an agree- ment for their conveyance made beforehand would be binding in equity." Prime et al. v. Brandon M'fg Co., 16 Blatch. 453.— Wheeler, 1879. 180. " The legal title to a patent may be in one person, and the equitable right to it in an- other ; and this applies to extensions as well as to original patents." — lb. 131. A patent for the invention in question was granted in Prance, August 31st, 1854 ; in FOEEIGN PATENT. 325 Great Britain, March 27th, 1855 ; and in the United States, July 24th, 1860 ; this latter patent was not limited in terms (as it should have been under the act of 1839) to fourteen years from the date of the French patent. In July, 1862, Congress validated the United States patent for fourteen years from its date, and at the expira- tion of said fourteen years the Commissioner ex- tended it for seven years. It was contended that under the act of 1870 the Commissioner had no power to so extend. Meld, that the Commis- sioner had such power. l{eib Am. File Co. v. Mclwlson Mle Go., 8 Fed. Rep. 816.— Lowell, 1881. 132. " The right of an owner of a patented machine, without any conditions attached to his ownership, to continue the use of his machine during an extended term of the patent, is well settled." . . . "Power to sell the machine and transfer the accompanying right of use, is an in- cident of unrestricted ownership." Union Paper-Bag Machine Co. ei al. v. Nixon et al., 105 U. S. 766.— Sup. Ct. 1882. 133. " After an extension has been obtained on the condition precedent of making . . . dis- claimer, the disclaimer cannot be held inoper- ative as respects the extended term." Union Metallia Cartridge Co. v. U. 8. Cartridge Co., 113 U. S. 634.— Sup. Ct. 1884. 134. " The assignment of an extension before the same is granted vests the extension in the assignee." Adams et al. v. Bridgewater Iron Co. et al., 34 O. G. 1045.— Colt, 1886. 135. The assignment by an inventor of his " right, title, and interest in said improvement," without more, does not carry to the assignee a title to an extension of the original patent. Johnson Y. Wilcox & Oibbs Sewing-Machitie Co., 23 Blatch. 531.— Wallace, 1886. FEES— GOVERNMENT. [See " Government Fees."] FOREIGN PATENT. "FoREiGJT Patent" in the Patent Acts. Act approved July 4th, 1836. Section 8 Provides That "nothing in this act contained shall be construed to deprive an original and true inventor of the right to a pat- ent for his invention, by reason of his having previously taken out letters-patent therefor in a foreign country, and the same having been pub- lished at any time within six months next pre- ceding the filing of his specification and draw- ings." [Repealed July 8th, 1870.] Act approved March 8d, 1839. Sec. 6. And be it further enacted, That no person shall be debarred from receiving a patent for any invention or discovery, as provided in the act approv,ed on the fourth day of July, one thousand eight hundred and thirty-six, to which this is additional, by reason of the same having been patented in a foreign country more than six months prior to his application : Provided, That the same shall not have been introduced into public and common use in the United States prior to the application for such patent : And provided also. That in all cases every such patent shall be limited to the term of fourteen years from the date or publication of such foreign let- ters-patent. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 25. An^ be it further enacted. That no person shall be debarred from receiving a pat- ent for his invention or discovery, nor sliall any patent be declared invalid by reason of its hav- ing been first patented or caused to be patented in a foreign country : Provided, The same shall not have been introduced into public use in the United States for m6re than two years prior to the application, and that the patent shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, but in no case shall it be in force more than seventeen years. [Repealed June 22d, 1874.] Act approved June 23d, 1874. Sec 4887. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by rea- son of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to ex- pire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more than seventeen years. Cases. 1. By the act of 1839 a home patent was to be limited to the term of fourteen years from the date or publication of a prior foreign patent to the same person for the same thing. It was held that a home patent not thus limited was " not only without the authority of the law, but 326 FOKEIGN PATENT. in -riolatidn of it." It was, however, held that the error might be corrected by the Patent Office. Smith v. Bly et al., 5 McLean, 76.— McLbau, 1849. 3. The proviso in Section 6 of the act of 1839, , and the proviso in Section 8 of the act of 1836, have reference to home patents applied for after the issue of the foreign patent. French et al. v. Sogers et al., 1 Fish. P. C. 133.— Kane, 1851. 3. Where the act of July 4th, 1836, mentions a patent for an invention previously " patented " abroad, the "word 'patented,' as here used, must, of course, mean covered and made known to the world by a public patent, so as to bring home to the public, generally and probably, a knowledge of its existence, and deprive any one of the credit and protection of being original if he afterward construct a like machine." And where the foreign country issues both secret and public patents, defendants must show the foreign patent to have been a public one. And where the foreign patent law required a certain kind of publication to make the patent valid, defend- ants must show that fact. Brooks et al. v. Noi'- cross et al., 3 Pish. P. C. 661. — Woodbtjby, 1851. 4. Under the act of March 3d, 1839, previous patenting abroad does not bar a patent here, unless the invention was introduced into public and common use in the United States prior to the application here. — lb. 5. Morse's home patent was applied for be- fore, but issued after his French patent for the same invention ; the home patent was limited on its face and expired with the said French pat- ent. The home patent was nevertheless sus- tained. O'Reilly et al. v. Morse et al., 15 Howard, 63.— Sup. Ct. 1853. 6. "Where the statute refers to the date of a foreign patent it refers to the date of making the same public to the wqyld. In the case of a British patent it means the date of the en- rolment of the complete specification. Howe v. Morton et al., 13 M. L. R. 70.— Spragub, 1860. 7. Having reference to Section 6 of the act of March 3d, 1839, " this ' public and common use,' prior to the application in this country, in the case of a foreign patent procured by the inventor more than six months before his application here, must be something more than the mere use of one machine or more by the inventor himself, in public, or by other persons, with his consent and allowance. The invention must have passed into general use in the community. To in- validate a patent upon the ground of a prior English patent, the use of the thing patented must not only be public within the United States, but must be a common and general use by the community. There is an obvious reason . . . for this distinction, which existed in the statute in force up to the act of July 8th, 1870, but which does not now exist, because the time has been extended to two years, and the word ' com- mon ' has been stricken out." " In order now to void a patent upon the ground of a prior patent in England, the invention must have been in public use two years prior to the ap- plication here, although it is not lequired to be in common use ; but this law was not in force before the act of July 8th, 1870." Am. S. & L. 8. & D. M. Co. V. Am. T. & M. Co. et al., 1 Holmes, 503.— Shbplby, 1870. 8. Having reference to Section 6 of the act of March 3d, 1839, " What would be a common use . . . must be considered with reference to the device invented or the thing patented. What would be a passing into common use of one in- vention might be a very different thing from what would be a passing into common use with regard to another invention. For instance, an hotel annunciator might be an invention appli- cable to hotels alone and useless for any other purpose. Such an invention could never come into common use in the community in the sense in which a friction match or a paper collar would, or any other device or invention which was intended to be used by the community." — lb. 9. Having reference to Section 6 of the act of March 3d, 1889, " There might be an invention applicable to only one species of manufacture, and if there were only three manufacturers of that particular article in the United States, and each one of those three publicly used the inven- tion, and if they were the only persons who would be likely to use, or whose business would require them to use such an invention, you might be justified in finding that the invention had passed into public and common use when it be- came universal with all the persons, or in all the manufactories for whose use the invention was designed." — lb. 10. Referring to Section 6 of the act of March 3d, 1839, "If an inventor obtained an English patent more than six months before he made his application in the United States for a patent for the same invention, and after it had been pat- ented abroad, and prior to the application here, that invention passed into public and common use in this community so as to become a part of the manufactures of this country, then whether the persons through whom it had been intro- duced here had derived their information of it from the English patent, or had invented it FOEEIGN PATENT. 327 themselves, or had derived it from the first in- ventor himself, the patent would he void."— 76. 11. " The statute was intended to require the patentee to use reasonable diligence, and to fix a proper time within which he must make his ap- plication, in justice to the public ; so that an in- vention which has been patented abroad and has become a matter of public notoriety, and of com- mon knowledge among persons engaged in that art or manufacture, shall not pass into the com- merce of the country, and into common and daily and public use by the community, and then, after the lapse of any length of time, the party go on and obtain a patent and prosecute the whole community as infringers." — lb. 13. Referring to Section 6 of the act of March 3d, 1839, " In determining what is common and general use . . . take into consideration the nature of the machine, the effects which it is designated to produce, and the number of per- sons or of manufactories likely to use it, so as to determine whether, in view of all the devices which constitute the characteristics of the in- vention, and the uses to which it .can be, and is designed to be applied, the use is a general, and common, and public use, or a private, special use under a particular grant or license. " — lb. I'd. In considering the effect of a prior foreign patent upon a later home patent, the question is whether the foreign patent " does or does not embody what is in the American patent, strik- ing out of consideration those claims in the re- spective patents which are not in issue, . . . and whether, so far as relates to that invention which s in issue, . . . they are or are not identical." —lb. 14. If the machine of the foreign jDatent re- quires " further invention to make it a practical and operative machine, and to embody the same invention which is described in the American patent, it would not work a forfeiture of the American patent." — lb. 15. The term of a home patent is not limited by that of a foreign patent granted surrepti- tiously to a party other than the original inven- tor. Kendrick v. Emmons, 3 Bann. & Ard. 308. — Sheplet, 1875. 16. " The act of 1839 was not intended to limit the inventor's inghts under the act of 1836, but to enlarge them. He still had the right to take out his patent for the full term, notwithstanding tliat he had obtained and published a foreign patent within six months. But after the six months, he had, for a further specified time, a right to take out his patent subject to the condi- tions and limitations specified in the act of 1889."— J J. 17. " The provisions in the act of 1839, with reference to the effect of his invention having been patented in a foreign country more than six months prior to his application, evidently re- fer to the fact of its having been patented by him, the applicant for the American patent." — lb. 18. " Sections 16 and 17 of the act of March 3d, 1861, . . . were intended to change all pre- existing statutory provisions by which American patents were limited to fourteen years, and to provide thereafter a term of seventeen years without extension. This being the intent of the Legislature, the provision of Section 6 of the act of March 3d, 1839, . . . that, where a foreign patent had been granted to the patentee, prior to his American patent, the latter patent should be limited to the term of fourteen years from the date of such letters-patent, was, by the operation of Section 16 of the act of 1861 necessarily amended, so that American patents subsequently issued, and embraced within such proviso, should extend for the new term of seventeen years from [ the date of the foreign patent. . . . The act of ! July 8th, 1870, . . . introduced a new princi- ple, and provided that the American patent should expire at the same time with the foreign patent, but should not exceed a term of seven- teen years." Weston v. White et al., 13 Blatch. 364.— SniPMAN, 1876. 19. " The act of 1870 provides that in' case of a prior foreign patent the United States patent ' shall expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term. ' The law of July 8th, 1870, Rev. Stat. 4887, was not retroactive, and could not operate to put an end to American patents granted be- fore the law took effect." Badische Anilin & Soda Fabrik v. Hamilton M'fg Co., 3 Bann. & Ard. 335.— Shepley, 1878. 20. A home patent was granted October 10th, 1871. Letters-patent of Great Britain were granted for the same invention to the same party, November 15th, 1860. The patentee made suc- cessful application for extension of the British patent, the extension being granted subsequent to the expiration, of the British patent, such ex- tended letters dating from the date of said ex- piration. The court held that the home patent in suit ceased to be operative when the original foreign patent expired. Henry v. The Provi- dence Tool Co., 3 Bann. & Ard. 501.— Clip- ford, 1878. 31. Inventions first patented in a foreign coun- try may be patented here, "provided the same shall not have been introduced into public use 328 FOREIGN PATENT. in the United States for more than two years prior to the application. ... By public use is meant use in public."— /J. 23, " The rule establiihed by the Patent OflSce requiring the applicant whose invention has been patented abroad to state that fact, and to give the date of any and all such foreign grants, is in conformity with the statute." Bland, ex parte, 15 O. G. 828.— Carttbr, 1879. 23. A foreign patent is not such for the pur- pose of limiting the home patent until that foreign patent is a full and perfect patent. American Diamond Bock Boring Co. v. Sheldon et al., 17 Blatch. 303.— Whbblbr, 1879. 24. -The acts of 1836 and 1839 touch the ques- tion of limiting the term of a home patent by reason of a foreign patent. " By the terms of the two acts inventions patented abroad more than six months before were not affected at all by the foreign patent." — lb. 25. " The burden rests upon the party claim- ing that the patent should be limited to show the facts which would limit it." — lb. 26. In considering whether a prior foreign ftat- ent limits the later home patent one question is, Whether what is set forth and claimed in the home patent as the invention, is set forth as the invention in the foreign patent ? Beissner et al. V. STiarp, 16 Blatch. 383.— Blatchpord, 1879. 27. Where a United States patent and a Canadian patent have been granted for the same invention, and the Canadian patent, being the for the same inventor, in order to get its limiting effect on the home patent. — lb, 32. A patent for the invention in question was granted in France, August 31st, 1854 ; in Great Britain, March 27th, 1855 ; and in the United States, July 24th, 1860 ; this latter patent not limited in terms (as it should have been under the act of 1839) to fourteen years from the date of the French patent. In July, 1862, Congress validated the United States patent for fourteen years from its date, and at the. expiration of said fourteen years the Commissioner extended it for seven years. It was contended that, under the act of 1870, the Commissioner had no power to so extend. Meld, that the Commissioner had such jjower. New Am. File Co. v. Nicholson File Co., 8 Fed. Rep. 816.— Lowell; 1881. 33. Though a United States patent be not limited in terms by a prior foreign patent for the same invention, it will expire the same as though it were so limited. — lb. 34. It seems that if a foreign patent were kept secret it would not be a bar to a later patent here. Scfwerken v. Swift, Courtney & BeecMr Co., 19 Blatch. ■ 209.— Whebler, 1881. 35. The fact that a copy of a foreign patent is properly certified goes to show that it is an open and not a secret patent. ^J&. 36. In considering the limitation of the term of a United States patent by reason of a prior foreign patent for the same subject-matter, it is the dates at whicli the patents are actually earlier, is for a term of five years, extensible to i granted, not the dates of application, that are to ten or fifteen years, the United States patent will expire at the expiration of said five years. — lb. 28. For a resume and discussion of legislation bearing on the question how a foreign patent limits the term of a United States patent for the same invention, see — . DeFlorez etal. v. Ray- nolds et al., 17 Blatch. 436. — Blatchford, 1880. 29. A laatent granted between the act of March 2d, 1861, and the act of July 8th, 1870, for an invention previously patented abroad runs sev- enteen years from the date when the foreign grant took effect as a patent. — lb. 30. While the date at which a foreign grant of patent takes effect is to be taken as the date of the foreign patent, so far as its limiting effect on a home patent for the same invention is con- cerned, the date of its publication is the impor- tant date so far as its effect in anticipating a home patent is concerned.— 7 ft. 31. " An interlocutory decree is always open to amendment and coiTection. " It is proper, during an accounting, to have the answer and decree amended to let in a prior foreign patent be taken into consideration. And it matters not that the foreign patent was actually delivered after the grant of a home patent. And in the case of a Canadian patent for five years, exten- sible by law, and actually extended, such exten- sion does not count to prolong the life of a home patent. Bate Refrigerating Co. v. Gillett, 22 O. G. 1205.— Nixon, 1882. 37. After interlocutory decree respondent will not be permitted to impeach the decree on the ground that complainant's patent was void, by reason of not being limited on its face to expire with a prior foreign patent for the same subject- matter. — lb. 33. By the court : " We find the law declar- ing that an inventor taking out a patent in the first instance in this country is entitled to a sev- enteen years' protection ; but if he has previous- ly obtained letters-patent in one or more foreign countries, then, while not deprived of his right to a patent here, the term to which the law in such case limits his protection is a period not extending beyond the date of the expiration of that one of the foreign patents first expiring. " POKEIGN PATENT. 329 'United States v. Commissioner of Patents, 23 O. G. 1365.— Cakttbr, 1882. 39. Where complainants have a foreign patent prior in date to the patent on which they bring suit, and the same as the patent in suit, witli un- substantial difEerences, the act whicli makes the home patent begin with the date of the foreign patent takes effect. Biemew et al. v. Sellars et al., 23 O. G. 2234.— Butler, 1883. 40. The decision of Judge Blatchford in De Flarez v. Raynolds, 17 Blatch. 436, as to the effect of the foreign patent for the same inven- tion upon the term of the home patent approved and followed. — lb. 41. " The meaning of Section 25 of the act of 1870 is that the United States patent shall ex- pire at the same time with the foreign patent having the sliortest term to run which was granted before the United States patent was granted, and not that it shall expire at the same time with the foreign patent having the short- est term to run which was granted before the time when the application for the United States patent was made." Oramme Electric Co. v. Arnoux & Hochliausen Electric Co. et al., 21 Blatch. 450.— Blatchford, 1883. 43. In considering the limiting effect of a foreign patent upon a home patent, it is not a pertinent fact that the foreign patent had a capacity of prolongation beyond the time at which it actually expired. — lb. 48. Although a foreign patent may be a secret patent, it yet has the limiting effect provided for by the statute upon the duration of the home patent. — lb. 44. Defendants having set up as a part of their defence a foreign patent anticipating the foreign invention, the court said . " As to these foreign patents, it might be remarked that this patent was granted under the act of 1870, . . . which provides that no person shall be debarred from receiving a patent for his invention or dis- covery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented in a foreign country, un- less the same has been introduced into public use in the United States for more than two years prior to the application, and that there is no evidence of such introduction into public use during that time anywhere." Vogely v. Noel et al, 18 Fed. Kep. 827.— "Whbbler, 1884. 45. Where a foreign court passes upon a foreign patent, the decision of that court is law for the courts of the United States. Bate Be- frigerating Co. v. Qillett et al., 20 Fed. Rep. 192.— Nixon, 1884. 46. Where a Canadian patent had been issued to a home patentee for the same invention patent- ed here, and prior to patent here, the expiration of the Canadian patent was first held to cause the home patent similarly to expire. A Cana- dian court adjudged the Canadian void ab initio. Thereupon it was held that the Canadian patent had no effect to limit the duration of the home patent.— /6. 47. Where an American patentee took a prior English patent for the same thing which Jiad been suffered to lapse for non-payment of tax, it was held that the home patent would not ex- pire until the expiration of the term originally contemplated by the foreign patent. Holmes Electric Protective Co. v. Metropolitan Burglar Alarm, Co., 22 Blatch. 471.— Wheeler, 1884. 48. "It is only a patent for an invention that has been previously patented in a foreign coun- try that is limited by the foreign patent. The description of the invention in the foreign pat- ent might affect the validity of the domestic one and might not, but would not limit it. " Holmes Electric Protective Go. v. Metropolitan Burglar Alarm Co., 22 Fed. Rep. 341.— Wheeler, 1884. 49. By the court : "There seems to be no room for fair doubt that Section 4887 is not to be construed as requiring the limitation to be expressed in the patent, but merely as control- ling the effect or duration of the grant. ' ' Canan V. Pmind Mfg Co., 23 Blatch. 173.— Wal- lace, 1885. 50. Complainant's English patent was applied for March 16th, 1868, and sealed August 31st, 1868, taking date from the time first named. Its United States patent was applied for December 28th, 1867, and issued April 21st, 1868. The court held that under Section 16 of the act of March 2d, 1861, taken in connection with Sec- tion 6 of the act of March 3d, 1839, this foreign patent did not limit the duration of the home patent. Cold & Stock Tel. Co. v. Commercial Tel. Co. et al., 23 Blatch. 199.— Shipman, 1885. 51. Where it is shown that, pending the ap- plication for a patent, applicant was referred to a prior foreign patent, and met and overcame the reference, it is to be presumed that the date of applicant's invention is prior to such foreign patent. Bailway Begister M 'fg Co. v. So. Hudson C. R. B. Co. et al., 23 Fed. Rep. 593.— Nixon, 1885. 53. When the differences between the thing shown and described in home and foreign pat- ents for the same general improvement are sim- ply differences of degree, the two patents are in substance for the same improvement. Commer- cial Mfg Co. et al. V. Fairbank Canning Co., 27 Fed. Rep, 78,— Blodgbtt, 1886. 330 FOREIGN PATENT. 53. A fair test of the question whether the American patent is anticipated by the foreign . patent, or is included therein, would be whether a person practising the precise improvement under the foreign patent would be held to in- fringe the home patent. — lb. 54. An inventor made application for patent in July, 1866. This application was rejected in November, 1866, and lay dormant in the Patent Office until June 33d, 1869, when a new and en- tirely different specification was substituted. The patent was granted July 16th, 1869. In December, 1866, an English patent issued for the same invention. The court held that the home patent was to be limited to run from the date of the foreign patent. Olobe Nail Co. v. Superior Nail Co. et al., 37 Fed. Eep. 450.— Blodgbtt, 1886. 65. Where there is a home patent for a certain invention and a prior foreign patent in ques- tion, the question is whether the same invention is patented in both patents. Clark v. Wilson, 28 Fed. Rep. 95.— Wheeler, 1886. 56. The fact that a United States patent is not limited upon its face to expire with the life of a prior English patent does not affect the valid- ity of the United States patent. American Pa- per Barrel Co. v. 'La/raway, 28 Fed. Rep. 141.— Shipmau, 1886. 57. A general statement by an applicant for a patent or his solicitor that he had patented the same thing abroad is not an estoppel against an inquiry into the identity of the home and foreign patent. Commercial M'fg Co., ConsoVd, et al. v. Fairbank Canning Co., 36 O. G. 1473.— Blod- GETT, 1886. 58. For an example of difference between a home and a foreign patent held to be immate- rial, see — . lb. 59. A fair test of the question as to whether an American patent is substantially identical with a previous foreign patent is to inquire whether a person would infringe the American patent if he were to practise the improvement described in the foreign patent. — lb. 60. The claim in the patent in suit for cotton belting was : " The improved article of manu- facture of hard, even-isurfaced, rigid, impervi- ous, non-elastic belt, composed of cotton canvas or duck, having its warp thread larger than the weft, both weft and warp being hard spun, the fabric tight woven, and folded, stitched, and saturated with linseed-oil." The matters de- scribed in the specification and claims, with the exception of the feature expressed in the words " having its warp thread larger than the weft," involved no novelty, such subject-matter being found in a British provisional specification«of 1878. The same subject-matter was shown in a British patent of 1877 to the patentee of the home patent. The patentee of the home patent sought to date his invention back of this British patent of 1877, by reference to it. The court held that such pretence was not sustainable. Qandy v. Main Belting Co., 28 Fed. Rep. 570. — Butler, 1886. 61. Section 4887 of the revised statutes pro- vides that " every patent for an invention which has been previously patented in a foreign coun- try shall be so limited as to expire at the same time with the foreign patent ; or, if tliere be more than one, at the same time with the one having the shortest term ; and in no case shall it be in force more than seventeen years." Of this the court said that it " should be read as though it declared that the United States patent is to expire at the same time with the term of the foreign patent previously obtained for the same invention, or, if there be more than one, at the same time with the one having the shortest term. Upon this construction the duration of the term of the United States patent is fixed wjbien the patent issues." (The meaning of this is, that where a prior foreign patent is taken for a cer- tain term of years and lapses before the expira- tion of that time by reason of the non-payment of the tax, such lapse does not affect the dura- tion of the home patent.) Paillard et al. v. Brung, 38 O. G. 900.— Wallace, 1886. 62. James E. Emerson filed application for United States patent on saws May 31st, 1871, and his patent was granted February 6th, 1873. October 12th, 1871, Emerson's agent made ap- plication for English patent on the same inven- tion and filed a provisional specification. The British patent was sealed April 3d, 1873, and dated October 12th, 1871. (Note that Emerson's British application was by provisional specifica- tion.) Held, that the Britisli patent did not limit the life of the home patent. Emerson et al. v. Lippert, 31 Fed. Rep. 911. — Acheson, 1887. 63. Where an American patent has been grant- ed for an invention previously patented abroad no subsequent foreign patent can affect the status of the American patent. Bate Eefrigerat- ing Co. V. Gillette et al., 31 Fed. Rep. 809.— Bradley, 1887. 64. In its limiting effect on a home patent a Canadian patent takes effect from its date, and not from the time of filing the Canadian model. -lb. 65. A Canadian patent for five years granted prior to the amended Canadian act of May 25th, 1883, extensible for a further term, expires at FRAUDULENT SALE OF PATENT EIGHT. 331 the end of the five years, as regards its limiting effect on a home patent. — lb. 66. A British patent granted for the term of fourteen years, defeasible before that time if certain taxes are not paid, is a patent for four- teen years as regards its limiting effect on a home patent. — lb. 67. Where a patentee has a home patent for an invention, and also a British patent showing the same thing in part, the additions found in the home patent do not prevent the foreign pat- ent from limiting the term of the home patent as to the part which is common to both. Ouar- antee Ins. T. & 8. D. Co. et al. v. Sellers et al., 8 Sup. Ct. Eep. 117.— Bradley, 1887. 68. A home patent had the following claim : " ' We claim, iu combination with a furnace A, and its chimney or smoke-discharge flue P, a system or series of air and gas regenerators, B', B'^ B^, B*, constructed substantially as specified, and having conduits and dampers so arranged that the air and gas may be led into and through such regenerators and furnace and out of the chimney, in manner and so as to be operated as and for the purposes hereinbefore described. We also claim the arrangement and combination of the air-space or open chamber C, with the furnace and its system of regenerators arranged and applied together, substantially in the man- ner and so as to operate as described. [The air- space here referred to is that by which the hearth of the furnace and other parts are cooled and prevented from destruction by the intense heat.] We also claim the arrangement and combina- tion of the air-chamber or space E, with the furnace, regenerators, conduits, and damper- chests applied thereto, the whole being substan- tially as specified. [The air-chamber D admits the atmospheric air to the regenerator.] We also claim the combination of a furnace with one or more regenerators or means of receiving the waste smoke and gaseous products, and in- tercepting or receiving heat therefrom, and also with means or devices by which all or a portion of the heat so intercepted or received may be absorbed by the fluent air or gas during its pas- sage into or to such furnace, for the purpose of improving or promoting combustion therein. ' ' ' A prior British patent to the same patentee had but one claim. Thereof the court said : " There is only one claim in the British patent,' it is true. But that claim, under the British patent system, entitled the patentees to their entire invention, and is at least as broad and comprehensive as all four claims in the American patent. It is in these terms : ' Having now described the nature of our invention, and the best modes we are ac- quainted with of performing the same, we wish it to be understood that we do not confine our- selves to the precise details shown on the accom- panying drawings ; but we claim as our inven- tion the various arrangements of regenerative furnaces worked by the gases resulting from an imperfect combustion of solid fuel in separate places, as hereinbefore set forth.' " — lb. 69. The sealing of a British patent is equiva- lent to the publication thereof. — lb. 70. The condition imposed by the act of 1839, that the term of a patent for an invention which has been patented in a foreign country shall commence to run from the time of publication of the foreign patent, was not repealed or abrogated by the act of 1861.— 7J. FRAUDULENT SALE OF PATENT RIGHT. Cases. 1. A, a patent owner, sought to sell an inter- est under his patent. B would not purchase unless C purchased with him. Thereupon A induced C to purchase with B, taking the sepa- rate note of Band C. Then, as had been agreed between A and C, A returned C his notes and paid him twelve dollars besides. A's conduct as regards B was held to be fraudulent, and com- pelled him to paymeut of damages to B. Ouher V. Webb, 13 Conn. 441.— Waitb, 1838. 3. Fraud in the sale of a patent right will avoid the sale. Nev>ell v. Qatling, 7 Ind. 147. — Perkins, 1855. 3. Fraudulent representatiops in the sale of a patent will avoid the sale. Pierce v. Wilson, 34 Ala. [N. S.] 596.— Clark, 1859. 4. State courts have jurisdiction of actions for recovery of damages for fraudulent representa- tions ih the sale of a patent right. Hunt v. Hoo- ver, 34 Iowa, 331.— Wright, 1868. 5. In an action on a promissory note given as a part of the consideration for the purchase of a patent right, the defendant may plead in bar of the action that he made the purchase through the false and fraudulent representations of the patent owner, and this defence will avail even though defendant, on discovering the fraud, did hot offer to reassign the right. Oroff v. Housel, 33 Maryland, 161.— Miller, 1870. 6. False and fraudulent representations of the value of the device of a patent will avoid a con- tract for the sale of an interest therein, and al- low the buyer to recover back his money. Page v. Bick&rson, 38 Wis. 694.— Cole, 1871. 7. Where fraud is practised in the sale of a 333 GOVEENMENT PEES. patent the contract will be rescinded at the in- stance of the party injured. Hall v. Orvis, 35 Iowa, 366.— Miller, 1873. 8. Where A, a patent owner, and B, another person, induce C to purchase an interest in a patent with B, the latter being really a sham purchaser, the transaction is a fraudulent one on the part of A and B. Hess v. Young, 59 Ind. 879.— BiDDLE, 1877. GOVERNMENT FEES. "Government Fees" in the Patent Acts. Act approved April 10th, 1790. Section 7. And be it further enacted. That such patentee as aforesaid shall, before he re- ceives his patent, pay the following fees to the several officers employed in making out and perfecting the same, to wit : For receiving and filing the petition, fifty cents ; for filing specific cations, per copy-sheet containing one hundred words, ten cents ; for making out patent, two dollars ; for affixing great seal, one dollar ; for indorsing the day of delivering the same to the patentee, including all intermediate services, twenty cents. [Repealed February 21st, 1793.] Act approved February 21st, 1798. Sec. 11. Andbeit further enacted, That every inventor, before he presents his petition to the Secretary of State, signifying his desire of ob- taining a patent, shall pay into the Treasury thirty dollars. [Repealed July 4th, 1836.J Act approved July 4th, 1836. Sec. 7 Provides that " if the applicant shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to re- ceive back twenty dollars, part of the duty re- quired by this act." Sec. 9. And be it furtJier enacted. That before any application for a patent shall be considered by the Commissioner as aforesaid, the applicant shall pay into the Treasury of the United States, or into the Patent OflSce, or into any of the de- posit banks, to the credit of tlie Treasury, if he be a citizen of the United States, or an alien, and shall have been resident in the United States for one year next preceding, and shall have made oath of his intention to become a citizen thereof, the sum of thirty dollars ; if a subject of Great Britain, the sum of five hundred dollars ; and all other persons the sum of three hundred dol- lars. Sec. 12 Provides that the fee on application to file caveat shall be twenty dollars, and that the same shall apply upon application for patent for the same invention. [Repealed July 8th, 1870.] Act approved March 3d, 1837. Sec. 12. And be it further enacted, That, whenever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, pursuant to the sev- enth section of the act to which this is addition- al, the certificate thereof of the Commissioner shall be a sufficient warrant to the Treasurer to pay back to such applicant two thirds of the duty he shall have paid into the Treasury on ac- count of such application. [Repealed July 8th, 1870.] Act approved March 2d, 1861. Sec. 9. And be it further enacted, That no money paid as a fee, on any application for a patent after the passage of this act, shall be with- drawn or refunded, nor shall the fee paid on filing a caveat be considered as part of the sum required to be paid on filing a subsequent appli- cation for a patent for the same invention. Sec. 10. And be it further enacted. That all laws now in force fixing the rates of the Patent Office fees to be paid, and discriminating be- tween the inhabitants of the United States and those of other countries, which shall not dis-' criminate against the inhabitants of the United States, are hereby repealed, and in their stead the following rates are established : On filing each caveat, ten dollars. On filing each original application for a pat- ent, except for a design, fifteen dollars. On issuing each original patent, twenty dol- lars. ****** On every application for the reissue of a pat- ent, thirty dollars. On every application for the extension of a patent, fifty dollars ; and fifty dollars in addi- tion, on the granting of every extension. On filing each disclaimer, ten dollars. [Re- pealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 68. And be it furtlier enacted. That the following shall be the rates for patent fees : On the filing of each original application for a patent, fifteen dollars. On issuing each original patent, twenty dollars. On filing each caveat, ten dollars. On every application for the reissue of a pat- ent, thirty dollars. On filing each disclaimer, ten dollars. On every application for the extension of a patent, fifty dollars. On the granting of every extension of a patent, fifty dollars. GOVERNMENT USE OF PATENT. 833 On an appeal for the first time from the pri- mary examiners to the examiners-in-chief, ten dollars. On every appeal from the examiners-in-chief to the Commissioner, twenty dollars. For certified copies of patents and other pa- pers, ten cents per hundred words. For recording every assignment, agreement, power of attorney, or other paper, of three hun- dred words or under, one dollar ; of over three hundred and under one thousand words, two dollars ; of over one thousand words, three dol- lars. For copies of drawings, the reasonable cost of making them. Sec. 75. And be it further enacted. That the following shall be the rates of fees in design cases : ' For three years and six months, ten dollars. For seven years, fifteen dollars. For fourteen years, thirty dollars. For all other cases in which fees are required, the same rates as in cases of inventions or dis- coveries. . . '. Act approved June 23d, 1874. Sec. 4934. The following shall be the rate for patent fees : On filing each original application for a pat- ent, except in design cases, fifteen dollars. On issuing each original patent, except in de- sign cases, twenty dollars. In design cases : for three years and six months, ten dollars ; for seven years, fifteen dollars ; for fourteen years, thirty dollars. On filing each caveat, ten dollars. On every application for the reissue of a pat- ent, thirty dollars. On filing each disclaimer, ten dollars. On every application for the extension of a patent, fifty dollars. On the granting of every extension of a patent, fifty dollars. On an appeal for the first time from the pri- mary examiners to the examiners-in-chief, ten dollars. On every appeal from the examiners in-chief to the Commissioner, twenty dollars. For certified copies of patents and other pa- pers, including certified printed copies, ten cents per hundred words. For recording every assignment, agreement, power of attorney, or other paper, of three hun- dred words or under, one dollar ; of over three hundred and under one thousand words, two dol- lars ; of over one thousand words, three dollars. For copies of drawings, the reasonable cost of making them. Cases. 1. The omission of the oath of invention, or of payment of Government fees— directed by statute— does not invalidate the patent. Whit- temore v. Gutter, 1 Gall. 429.— Stoby, 1813. GOVEENMETSTT USE OF PATENT. Cases. 1. The jurisdiction of the Court of Claims does not embrace a case where a Government subordinate infringes a patent upon his own motion and authority. Pitcher v. U. 8., 1 Nott 6 Hunt, 7.— Casey, 1863. 2. Where a Government agent uses a patent- ed improvement, under an arrangement with the patentee that the latter will await the action of Congress to get his compensation, the Court of Claims has no jurisdiction to award com- pensation. ' Bhavor et aX. v. U. 8., 4 Nott & Hunt, 440.— Nott, 1868. 3. The Court of Claims has jurisdiction of an action by a patentee agfiinst the Government for the recovery of an agreed royalty. Burns v. U. 8..4, Nott & Hunt, 113.— Loring, 1868. 4. The patent in suit was for defensive armor for marine or land batteries, and consisted of iron armor plates laid in the usual way against the outer timbers of the vessel. The defend- ants acted as the agent of the Government in procuring such wooden armor and outside plat- ing to be put on. The work was done by day's work and by the pound ; the Government paid the bills through the defendants. Defendants were held not to infringe, the court saying : " To hold that workmen and employes of the Government, who do work for it upon a vessel owned by it, and are paid by it for doing such work, . . . can be held liable . . . for infring- ing a patent . . . would be, in effect and sub- stance, to allow the Government itself to be sued in the guise of a suit against its workmen, and would lead to embarrassments of the operations of the Government which might prove of serious detriment." Heaton et al. v. Quintard et al., 7 Blatch. 73.— Blatchford, 1869. 5. "If an officer in the military service not specially employed to make experiments with a view to suggest improvements, devises a new and valuable improvement in arms, tents, or any other kind of material, he is entitled to the benefit and to letters-patent for the improvement from the United States, equally with any other citizen not engaged in such service, and the Government cannot, after the patent is issued. 334 GOVEENMENT USB OP PATENT. make use of the improvement any more than a private individual, 'without the license of the inventor, or making compensation to him." United States v. Burns, 13 Wallace, 346.— Stjp. Ct. 1870. 6. The Government cannot make use of a pat- ented improvement, without license, any more than a private individual. Brady v. Atlantic Works, 4 Cliff. 408. -Clifford, 1876. 7. " Contractors of the Government derive no power ... by virtue of their contract, to take the property of private individuals with- out their consent, and to use and apply the same in fulfilling their contract obligations." — lb. 8. " Public employment is no defence to the employe for having converted the private prop- erty of another to public use without his consent and without just compensation. Private prop- erty, the Constitution provides, shall not be taken for public use without just compensation, and it is clear that the provision is as applicable to the Government as to individuals, except in cases of extreme necessity in time of war, and of imme- diate and impending public danger. ' ' Gam/meyer et al. V. Newton et al., 94 U. S. 325.— Strp. Ct. 1876. 9. " The Government cannot, after the patent is issued, make use of the improvement any more than a private individual, without license of the inventor, or making him compensation." —n. 10. A Government grant giving a certain party the exclusive right to lay telegraph cables over a certain route, gives that party no right to use patented inventions of other parties. Colgate v. International Ocean Tel. Co., 17 Blatch. 308. — Blatchford, 1879. 11. " Neither the Government, nor an agent of the Government, nor a private individual, whether claiming to act under the Government or otherwise, can use a patented improvement without the license of the patentee. "^/ J. 13. " That the acts constituting the infringe- ment were committed in the exercise of author- ity derived from the state cannot shield the defendants from liability." Allen v. City of New Torh et al., 17 Blatch. 350. — Whbelbr, 1879. 13. A postmaster, who infringes by using a patented cancelling stamp, cannot escape the consequences of his infringement through being a Government oflScer. Camphell v. James et al., 17 Blatch. 42.— Wheeler, 1879. 14. A licensee may defend against a patent on the ground of its invalidity, and where the Gov ernment is the licensee it may do likewise. Morse M'fg Co. v. United States, 16 Nott & Hop. C. C. 396.— Davis, 1880. 15. " The United States has no such preroga- tive as that which is claimed by the sovereigns of England by which it can reserve to itself, either expressly or by implication, a superior dominion and use in that which it grants by letters-patent to those who entitle themselves to such grants. The Government of the United States, as well as the citizen, is subject to the Constitution." James v. Ca/mpbell et al., 104 U. S. 356.— Sup. Ct. 1881. 16. " The mode of obtaining compensation from the United States for the use of an inven- tion, where such use has not been by the con- sent of the patentee, has never been specifically provided for by any statute." — lb. 17. Doubted that a suit for infringement of a patent can be sustained against a public officer who has acted " only for and in behalf of the Government." — lb. 18. The United States Government has no right to use a patented invention without per- mission of the patentee. McKeever v. U. S., 14 Nott & Hop. 396.— Sup. Ct. 1878. 19. Where the patentee submitted his patent- ed cartridge to a board created for the purpose of adopting a cartridge for the use of the United States, and under recommendations of that board the Government proceeded to manufacture and use cartridges, it was held that such act of the Government was not a tort, and that the paten- tee had not, by the submission of his cartridge to the board, granted the Government a license. —lb. 30. By the court : "I do not definitely un- derstand that Campbell v. James (104 U. S., 856) definitely decided that a bill in equity will not lie against an oflScer of the United States for his unauthorized use of a patent solely in the service of the Government. ' ' Forehand et al. v. Poiier, 15 Fed. Rep. 256.— Shipman, 1883. 21. "If the right of the patentee was acknowl- edged, and without his consent an officer of the Government, acting under legislative authority, made use of the invention in the discharge of his official duties, it would seem to be a clear case of the exercise of the right of eminent do- main, upon which the law would imply a prom ise of compensation, an action on which would lie within the jurisdiction of the Court of Claims. . . . And it may be that, even if the exclusive right of the patentee were contested, such an action might be brought in that court involving all the question relating to the valid- ity of the patent." HolUster, Collector y. Bene- dict M'fg Co., 113 U. S. 59.— Sup. Ct. 1886. GEANT. 335 gra:nt. " GkANT " TN THE PaTBNT AcTS.' Act approved July 4th, 1836. Sbction 11. And he it further enacted. That every patent shall he assignahle in law, either as to the whole interest, or any undivided pai't thereof, by any instrument in writing ; which assignment, and also every grant and convey- ance of the exclusive right, under any ijatent, to make and use, and to grant to others to make and use the thing patented within and through- out any specified part or portion of the United States, shall be recorded in the Patent OiBce within three months from the execution thereof. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 36. And he it further enacted. That every patent, or any interest therein, shall be assignable in law by an instrument in writing ; and the patentee, or his assigns or legal representatives may, in like manner, grant and convey an ex- clusive right under his patent, to the whole or any specified part of the United States ; and said assignment, grant, or conveyance shall be void as against any subsequent purchaser or* mort- gagee for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof. [Repealed June 22d, 1874.] Act approved June 32d, 1874. Sec. 4898. Every patent, or any interest there- in, shall be assignable in law by an instrument in writing ; and the patentee or his assigns or legal representatives may, in like manner, grant and convey an exclusive right under his patent to the whole or any specified part of the United States. An assignment, grant, or conveyance shall be void as against any subsequent pur- chaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Pat- ent Office within three months from the date thereof. Cases. 1. "A patent right of itself is unsusceptible of local subdivision." W hittemm-e v. Cutter, 1 Gall. 439.— Stobt, 1813. 2. The grantee of a territorial right "may support a suit in equity to enjoin third persons from infringing the patent, and for an account. " Ogle et al. v. Bge, 4 Wash. 584.— Wash. 1836. 8. An agreement to make a grant under a pat- ent for a certain territory is not fulfilled by a grant containing a limitation. Edwa/rd v. Bieh- ards, Wright, 596.— Lane, 1884. 4. " The patentee may assign his exclusive right within and throughout a specified part of the United States, and upon such an assignment the assignee may sue in his own name for an in- fringement of his rights. But in order to en- able him to sue, the assignment must undoubt- edly convey to him the entire and unqualified monopoly which the patentee held in the terri- tory specified, excluding the patentee himself, as well as others. And any assignment short of this is a mere license. " Gayler et al. v. Wilder, 10 Howard, 477. -Sdp. Ct. 1850. 5. A grantee under a patent may and must sue in his own name, and not in that of the pat- entee.-^/ J. 6. "A grantee is one who has transferred to him in writing t^ns exclusive right, under the pat- ent, to make and use, and to grant to others to make and use the thing patented within and throughout some specified part or portion of the United States. Such right must be an exclusive sectional right excluding the patentee there- from." Potter et al. v. Holland, 4 Blatch. 306. — Ingersoll, 1858. 7. " The terms assignee and gr&ntee are not ' used in this patent law of 1886 as synonymous terms, though courts, without having their at- tention particularly called to the subject, have sometimes used them indiscriminately and in their popular sense. They have, however, . . . separate and distinct meanings." — lb. 8 A grant of territory under a patent is suffi- ciently specific if it give the patentee's name, the title of the invention, and the date of the patent. Hill v. Thuermer, 18 Ind. SSI.- — Pbb- KiNS, 1859. 9. The terms of an original grant under a pat- ent are not to be varied by parol evidence. Gal- pin et al. V. Atwater, 29 Conn. 98. — Ellsworth, 1860. 10. " Grants, as well as assignments, must be in writing, and they must convey the exclusive right, under the patent, to make and use, and vend to others to be used, the thing patented, within and throughout some specified district or portion of the United States, and such right must be exclusive of the patentee, as well as of all others except the grantee. " Moore v. Marsh, 7 Wall. 515.— Sup. Ct. 1868. 11. In construing a conveyance under a pat- ent, " parol testimony to show all the circum- stances is admissible when the language may be susceptible of more than one meaning, such as their knowledge of the subject-matter of the contract, and all other facts that would throw light upon the intention of the parties." May et al. V. vJiaffee et al., 3 Dillon, 385.— Nelson, 1871. 336 INFRINGEMENT. 13. A conveyance under a' patent contained in unmistakable language an absolute conveyance as regarded a certain district ; it compelled the grantee to pay royalty, with a clause of for- feiture in case of non-payment or neglect ; this grant was recorded. It was accompanied, at the time of making it, with a supplementary agreement, never recorded, which contained among other things a stipulation that the grantee should not have the right to apply the principle of the patent to furnaces erected in cellars or basements of houses, for the purpose of heating several rooms. The paper first referred to was held to be a grant notwithstanding the supple- mentary agreement. lAttlefield et al. v. Perry, 21 Wall. 305.— Sup. Ct. 1874. 13. A conveyance carried " The full and ex- clusive right to use and to sell to be used the said saw -hangings [the 'invention being previ- ously stated to be known as Hamilton's oscillat- ing and reciprocating saw-hangings], as they are or may be applied to mulay or single upright mill-saws, as secured by the said letters- patent, for and in the state of New York, I excepting and reserving the right to manufacture the said Invention for myself and legal representatives." Thereof the court said : " The effect of such a grant, coupled with the reservation, is to grant an exclusive right to use and sell, and a right to make, and to reserve a right to make in common with the right of the grantee to make, and the grantor not retaining any right to use or sell in the state of New York, any machines made by him in that state." Hamilton v. Kingsbury et al., 15 Blatch. 64.— Blatchford, 1878. INFRINGEMENT. [As to how patents are to be construed and, in the light of such construction, what amounts to infringement, see " Construction of Patent — In General," and "Construction of Patent — Spe- cific Cases." Those questions are not treated under this topic] Cases. 1. Infringement of a patent is a tort. Torts are several as well as joint. In a suit against several persons, recovery may be had against one only. Eeutgen v. Kanowrs et al., 1 Wash. 168.— Wash. 1804. 3. The " Act for the relief of Oliver Evans," passed January 31st, 1808, did not permit a per- son who had not erected the machine in ques- tion, prior to the passage of the act, to use the machine afterward. Evans v. Weiss, 3 Wash. 343.— Wash. 1809. 8. The right to a patent belongs to the first inventor before his patent issues. One who, knowibg that another is the first inventor, erects the invented machine beforfe the patent issues, cannot use the machine after patent granted. — n. 4. The " Act for the relief of Oliver Evans," passed January 21st, 1808, did not authorize a person who erected the machine in question prior to the renewed patent, to use the machine after- ward. Evans v. Jordan et al., 1 Brock, 248. — Mabshall, 1813. 5. The mere making, or using, or vending of a patented thing is an infringement. Wkitie- more v. Cutter, 1 Gall. 429.— Stoby, 1813. 6. " The making of a patented machine, to be an oifence, . . . must be the making with an intent to use for profit, and not for the mere purpose of philosophical experiment, or to as- certain the verity and exactness of the specifica- tion." Sawin et al. v. Ouild, 1 Gall. 484. — Stoet, 1813. 7. "A sale of a patented machine (in order to infringe) must be a sale, not of the materials of a machine, either separate or combined, but of a complete machine, with the right, expressed or implied, of using the same in the manner secured by the patent." — lb. 8. An inventor and patentee of an improve- ment on a patented machine does not thereby ac- quire the right to use the original machine. Odiorne v. Winkley, 2 Gall. 51.— Stoey, 1814. 9. The " Act for the relief of Oliver Evans," approved January 21st, 1808, does not permit those who erected the machine in question, after the expii-ation of the original patent, and prior to the grant of the new patent, to use the ma- chine after the issue of the new patent. Evans V. Joi-dan etal., 9 Cranch, 199.— Sup. Ct. 1815. 10. Where a subsequent inventor and patentee improves upon the machine of a prior inventor and patentee, neither patentee is entitled to use the invention of the other without license. Qray et al. V. James et al., 1 Peters's C. C. 394. — Wash. 1817. 11. Where the plaintiff claims distinct improve- ments in the same machine, he is entitled to re- cover against the use of any one of them. Moody V. Fiske et al., 2 Mason, 313.— Stoey, 1820. 13. If a person puts another's invention into use before the inventor secures his patent, the patent ought not to take away the former's right. Morris v. Huntington, 1 Paine, 348. — Thompson, 1824. 13. Defendant contracted with another party to buy all of certain articles such party could make in a specified time, defendant knowing that INFRINGEMENT. 337 such party was to employ an infringing machine in making the articles. Held, that if the contract was real and not colorable, defendant did not infringe the patent on the machine. Eeplin- ger v. Be Young, 10 Wheat. 358.— Sup. Ct. 1825. 14. Recovery of damages for infringement does not transfer to defendant the right to the subsequent use of the patented thing. Earle v. Sawyer, 4 Mason, 1.— Stoey, 1835. 15. A mere workman, clerk, or shopman — acting for another — is not an infringer. That other, for whose account the labor is done, is the responsible party. Delano v. Scott, 1 Gilpin, 489.-H0PKINS0N, 1834. 16. The patent in question was for certain de- vices for making bedsteads. A owned certain territory under this patent, and B owned cer- tain other territory. The products manufactured by A were sold in B's territory. B claimed in- fringement, and the court held that there was no infringement. Boyd v. Brown, 3 McLean, 395.— McLean, 1843. 17. Doubts upon the question of infringement are to be decided in favor of defendants. Brooks et al. V. Jenkins et al., 3 McLean, 432. — Mc- Lean, 1844. 18. That section of the law which permits a person who uses a patented machine, before the application for patent was made, to continue that use after patent granted, does not apply to the case where the use prior to application was without the inventor's knowledge and consent. Pierson v. Eagle Screw Co., 8 Story, 403. — Story, 1844. 19. The sale of a thing manufactured by a patented machine is not a violation of the pat- ent. Boyd V. McAlpin, 3 McLean, 427.— Mc- Lean, 1844. 20. Defendant's machine may be patented as an improvement upon, and better than, com- plainants' machine, and still be an infringement. WasMmrn et al. v. Omild, 3 Story, 122.— Story, 1844. 21. " Every person who violates a patent is bound before he does so to know that he puts himself to the peril of establishing a good de- fence, and he has no right to violate it, and then to seek indulgence from the court to find out some possible ground, or some probable evidence to support him in his acts." — lb. 23. Foundry men, who cast an infringing arti- cle as employes of another party, may b^ held as infringers. Bryee v. Dorr et al., 3 McLean, 583.— McLean, 1845. 23. He who is selling patented articles with- out right,' as the agent of another, may be en- joined. Buck et al. v. Cobb et al. , 9 Law Rep. [o. S.] 545.— CoNKLiNG, 1846. 34. A person acting in complainants' behalf went to defendants' store and ordered from tlie porter a portion of a specific roll of oil-cloth bearing a pattern patented to the complainants, which roll defendants did not intend to sell. The facts were held not to amount to infringe- ment. Sparkman et al. v. Iliggins et al., 3 Blatch. 29.— Bbtts, 1846. 35. The grantee of an exclusive right to make and use and vend a patented machine, has the right to vend the product of such machine out- side of the said territory. Simpson et al. v. WiU son, 4 Howard, 709.— Sup. Ct. 1846. 36. For a case where infringing articles were made by one party for another, and that other was held an infringer, see — . Blanchard Gun- stock Turning Factory v. Jacobs, 2 Blatch. 69. — Betts, 1847. 27. Making an improvement on a patented machine does not give the improver the right to use that patented machine. Woodworth et al. v. Rogers et al., 3 W. & M. 135.— Woodbury, 1847. S8. Nor can the original patentee of the ma- chine use the afterward patented improvement of another without a license. — lb. 29. If a defendant arranges his machinery on the same principle as that of the plaintifE he is guilty of infringement. It is not essential that the defendant's machine in its form should be exactly similar to that of complainant, but it must work on the same principle. Parker ^^^ Howorth, 4 McLean, 470.— McLean, 1848. 30. It cannot be said " that the essential char- acter of a machine is varied by a mutual inter- change of form and direction between the two elements of which it is a combination, while both object and effect remain as before." Wil- son y. Barnum, 1 Wall., Jr. 347. — Kane, 1849. 31. The question of infringement, " is one ir- respective of motive. The defendant may have infringed, without intending, or even knowing it, but he is not, on that account, the less art infringer." Parker v. Hulme, 7 West. L. W. 417. -Kane, 1849. 33. Although defendants may have a patent for their device subsequent to that of the plain- tifE, " the question is : Whether the article actu- ally made by the defendants is substantially the same as that patented by complainant ?" Many V. Sizer et al., 1 Fish. P. C. 17.— Sprague, 1849. 33. The superior utility of defendants' device "may arise to so high a degree as to become conclusive" of substantial difference. " From our inability to penetrate the secrets of nature 338 INFEINGEMENT. we may not be able to detect the new principle or power otherwise than by its efiects. But this utility must be derived from the changes in- troduced, not from the use of better material or greater skill or care in the manufacture." — Ih. 34. " If the changes made by the defendants have rendered their" device "one of greater utility than the plaintiff's, such utility is evi- dence that some new principle, or mechanical power, or new mode of operation producing a new kind of result, has been introduced. And the greater such utility the stronger is such evi- dence. And if a manifest and very high degree of utility is obtained by such changes, it be- comes full proof and conclusive that a new principle or mechanical power, or a new mode of operation has been introduced, and that the defendants' ' ' device " is no infringement. ' ' — lb. 35. " On the question of infringement the burden of proof is with the plaintiff." Parker V. Stilen, 5 McLean, 44. — Leavitt, 1849. , 36. " In order to make out the act of infringe- ment the plaintiff must prove that the defend- ant has used his invention either in the precise form in which it is constructed under the patent, or in a form, and on principles, substantially the same. To constitute this identity, and to make put the fact of infringement, it is not necessary that the structure or machine used by the de- fendant should be the same in appearance, form, or proportions as that invented and patented by the plaintiff. ' ' — lb. 37. " The inventor is entitled to the protection . which the Government has granted him, and any one using the principle thus embodied is guilty of an infringement, however he may have perfected the machinery by superior skill in the mechanical arrangement and construction of the parts. Such perfection is but the skill of the mechanic, not the genius of the inventor." Parkhurst v. Kinsman et al.j 1 Blatch. 488. — Nelson, 1849. 88. A man may invent an improvement upon a prior patented device, but he cannot use lus device without a license from the prior patentee. Smith et al. v. Downing et al., 1 Fish. P. C. 64. — WOODBUET, 1850. 39. The result attained by defendants' device may be the same as the result attained by plain- tiffs' patented device, but that is not conclusive of infringement. — lb. 40. " When the material of the combination ceases to exist, in whatever way that may occur, the right to renew it depends upon the right to make the invention. If the right to make does not exist there is no right to rebuild the com- bination. But it does not follow when one of the elements of the combination has become so much worn as to be inoperative, or has broken, that the machine no longer exists, for restoration to its original use by the owner who has bought its use. When the wearing or injury is partial, then repair is restoration and not reconstruc- tion." Wilson V. Simpson et al., 9 Howard, 109.— Sup. Ct. 1850. 41. " Repairing partial injuries, whether they occur from accident or from wear and tear, is only refitting a machine for use, and it is no more than that, though it shall be a replacement of an essential part of the combination." But if the whole machine " should happen to be broken, so that its parts could not be readjusted, or so much worn out as to be useless, then a purchaser cannot make or replace it by another, but he must buy a new one. The doing of either would be entire reconstruction." — lb. 42. The buyer of such a patented machine as the Woodworth planing machine may properly replace its cutting knives without infringement. —lb. 43. Although a person may patent an im- provement upon an earlier patented improve- ment, he cannot use the combined improvement, in default of license, without infringing the prior patent. Colt v. Massachusetts Arms Company, 1 Fish. P. C. 108.— WooDBURT, 1851. 44. On the question of infringement each claim is to be considered separately. — lb. 45. The sale of a patented article by the de- fendants to an agent of the plaintiffs employed 10 make a purchase, is an infringement which will support an action. Byam et al. v. Bullard etal., 1 Curtis's C. C. 100.— Curtis, 1853. 46. He who infringes should satisfy himself of his right beforehand, not infringe first and look up defences afterward ; and the statutory reference to the pleading of defences is to be construed in this li^ht. Silsby et al. v. Foote, 14 Howard, 318.— Sup. Ct. 1853. 47. " It is evident that the sale or use of the product of a patented machine is no violation of the exclusive right to use, construct, or sell the machine itself ; and that the patent for a new and iniproved process, by which any prod- uct or manufacture, before known in commerce, may be made in a cheaper and better manner, grants nothing but the exclusive right to use the particular process. Where a known manufac- ture or process is in the market, purchasers are not boufiid to inquire whether it was made on a patented machine or by a patented process." Goodyear et al. v. Central Bailroads of New Jer- sey, 3 Wall., Jr. 356.— Gribr, 1853. 48. Although complainant may have the legal INPEIJSTGEMENT. 339 title to a patent, if defendants have an equitable right to use it defendants cannot be enjoined. Bay V. Candee et al., 3 Pish. P. C. 9.— Ingbr- BOLL, 1853. 49. Directors of an infringing corporation who participate in its management, and the agents of the corporation, are parties, and may be re- strained from infringement by injunction. Good- year et al. V. PheVps et al., 3 Blatch. 91. — Nel- SOK, 1853. 50. Although defendant's machine, incident- ally to its main function, may perform the functions of plaintiff's patented machine in some slight degree, that fact does not prove infringe- ment. Pitts V. Wemple, 1 Bissell, 87.— Drum- MOND, 1855. 51. A patent is infringed if either claim is in- fringed. — lb. 53. " The superior utility of defendant's de- vice is not, of itself, a certain test upon the question of infringement, because defendant's device may contain the vphole .substance of plaintiff's and something in addition." — lb. 53. Defendant's addition of improvements to plaintiff's patented device does hot give defend- ant the right to use the patented device. Wi- nans v. New York & Harlem R. R. Co., 4 Pish. P. C. 1.-— Nelson, 1855. 54. " The patent laws of the United States are not extended over foreign vessels visiting our ports so as to affect the structure or equipment which they bring hither. " Brown v. Duchesne, 3 Curtis's C. C. 371.— Curtis, 1855. 55. " An infringement of a patent takes place whenever a party avails himself of the inven- tion of the patentee without such a variation as will constitute a new discovery. A man may improve a patented machine so as to entitle him to a patent for his improvement, but that will not give him a right to use the invention of the first patentee without his license. A machine is an infringement of another if it incorporate in its construction and operation the substance of the invention ; that is, by an arrangement of mechanism which performs the same service, or produces the same effect in the same way, or substantially the same way. Mere colorable al- terations or adroit evasions, by substituting one mechanical equivalent for another in the com- bination which constitutes the machine, should never be allowed to protect a party." Foss et al. V. Herbert, 1 Bissell, 131.— Drummond, 1856. 56. " The rights of property and exclusive use granted to a patentee do not extend to a foreign vessel lawfully entering one of our ports ; . . . the use of such improvement in the construc- tion, fitting out, or equipment of such vessel, while she is coming into or going out of a port of tlie United States, is not an infringement of the right of an American patentee, provided it was placed upon her in a foreign port, and author- ized by the laws of the country to which she belongs." Brown v. Duchesne, 19 Howard, 183. —Sup. Ct. 1856. 57. "An infringenient is a copy made after and agreeing with the principle laid down in the patent." Page v. Ferry, 1 Pish. P. C. 398.— WlLKlNS, 1857. 58. If a machine is constructed with the in- tent that by the wear of the machine the pat- ented improvement shall be brought into play, it is an infringement, but if the intent be bona fide the other way, then, although wear and use may bring the improvement into play the ma- chine is not an infringement. — lb. 59. " The invention patented, when a patent is taken out for a machine, is the machine itself — the mechanical means and devices by which certain results in the operation of the machine can be obtained ; and when the inventor has obtained a patent for his invention, he is entitled to the exclusive use of it, if that invention is a machine, for all the uses and purposes to which that machine, without the exercise of any in- ventive power, can be usefully applied. In other words, when he patents a machine, he can- not patent either a purpose or an effect, but the mechanical means, devices, and organization which his machine embodies ; and when these means, devices, and organization are patented, the patentee is entitled to the exclusive use of this mechanical organization, device, or means for all the uses and purposes to which they can be applied, to every function, power, and ca- pacity of his patented machine, without regard to the purposes to which he supposed originally it was most applicable, or to which he supposed it was solely applicable, if such were his original view." Corumer v. Roach et al., 4 Pish. P. C. 13.— Hall, 1857. 60. " It may . . . happen very frequently in the progress of invention, that the original in- ventors of a machine, calculated to accomplish a particular purpose, may bring an action against a person who has patented an improve- ment upon that machine, for using the original machine, while the party who had patented the original machine may also be liable to an action for the use, not of what he has patented, but for the use of what has been patented to his ad- versary. ' ' — lb. 61. "If even a party originally obtains a li- cense from a patentee to use his invention, but neglects to pay his license price for a long time, 340 IJSTPEINGEMENT. and, finally, when prosecuted, abandons his li- cense, or, while relying upon it, depends also upon other grounds, the license will be forfeited, and he will be liable as an infringer." Bell v. McCuUotigh et al., 1 Bond, 194. — Lbavitt, 1858. 63. If defendant " has taken that which be- longs to the plaintiff, then he is responsible, al- though he may have added something of his own." Johnson v. Hoot, 1 Fish. P. C. 351. — Spragtjb, 1858. 63. " If one machine, which is alleged to be an infringement of another, produces a different result, or, in other words, is of greater utility than the former preceding machine, it may be some evidence of a difference, a substantial difference, between them ; and the utility of one over the other may be so great as to be satisfac- tory evidence that some new principle is in- volved, and that it is not substantially the same. This is sometimes coupled, too, in considering the evidence with the mechanical differences. The mechanical differences may be sufKcient to show that the two machines are not substantially the same. The difference of result and utility may be so great as to be satisfactory to the jury. They may be authorized to receive it as satisfac- tory, if it is of so very high a nature. And it may be that neither of these alone would be satisfac- tory, yet the mechanical difference, and the differ- ence of utility, taken together, may be sufficient to satisfy the mind." — Ih. 64. " Where in two devices the end to be ac- complished is the same, and the substantial means to accomplish the end are the same, the two devices are identical, though one may ac- complish the end more effectually than the other." Imlay v. Norwich & Worcester R. R., 4 Blatch. 227.— Ingbksoll, 1858. 65. A telegraph company owned certain terri- tory under a certain patent ; another telegraph company sent its messages around this territory instead of through it, and was held not to infringe the patent. Western Tel. Co. v. Magnetic Tel. Co., 21 Howard, 456.— Sup. Ct. 1858. Western Tel. Co. V. Penniman, 21 Howard, 460. — Sup. Ct. 1858. 66. Where a party has used a patented im- provement in making goods, and put the goods on the market, he cannot escape infringement by calling his operation an experiment. Pop- jienhusen v. N. T. Outta Percha Oomb Co., 4 Blatch. 184.— Ingersoll, 1858. 67. " When one in the employment of a cor- poration, in the business of his employment does an act for their benefit, and which they adopt and practice, and take advantage of, they will be deemed to have authorized the act, and will be as much bound by it as though expressly authorized. ' ' — lb. 68. "It is a well-established rule that if a patent is granted to one man for any machine or combination, and then a patent is granted to an- other man for an improvement upon that ma- chine or that combination, that such patent which the second man obtained cannot be used, if by its use the first patent is infringed." Wa- terhury Brass Co. v. N. T. & Brooklyn Brass Co., 8 Fish P. C. 43.— Ingehsoll, 1858. 69. " In order to establish an infringement, it is unnecessary that the devices used by the de- fendants should be an exact copy of the devices of the plaintiffs, that the machine of the defend- ants should be literally and exactly like the plaintiffs'. All that is required is, that the de- vices of the defendants should be substaatially like the devices patented to the plaintiffs, al- though they may use another device which im- proves the devices patented to the plaintiffs." — n. 70. " If the defendants . . . substitute, for something in the plaintiffs' machine, a passive agency which performs no useful object, in ad- dition to the agency employed by the plaintiffs, such substitution of a passive agency would not alter the character of the plaintiffs' machine ; and if without the substitution of such passive agency, the patent of the plaintiffs would be violated, it would also be violated after such passive agency had been substituted." — lb. 71. A man cannot use the patented improve- ment of another by engrafting his own improve- ment thereupon. Whipple v. Baldwin M'f'g Co., 4 Pish. P. C. 29.— Spragub, 1858. 72. Although defendants may have a patent on their manufacture, yet, " a mere addition to a patented invention will not justify the use of the invention first patented." Hayes et al. v. Siilaor et al., 1 Bond, 279.— Lbavitt, 1859. 73. A patent is infringed if either claim there- of is infringed. — lb. 74. Where parties had a license to use the Woodworth planer, and did use it, and made and used another machine for doing a part of the work, keeping the planer idle meanwhile, they were held to infringe. Bloomer v. Oilpin et al., 4 Fish. P. C. 50.— Lbavitt, 1859. 75. " It is well settled that the mere making of a patented machine, though it is neither used nor sold, is an infringement of the right of the patentee for which an action may be main- tained." — lb. 76. " Forms are nothing. If forms were es- sential, every patent that had been granted could INFEINGEMENT. 341 be successfully contested." Gorvmer v. Rapp, 4 Fish. P. C. 57.— Ingbksoll, 1859. 77. Defendant's patent can have no effect upon plaintiff's rights. — lb. 78. Complainants made and sold rubber shoes vulcanized under the Goodyear patent. Ds- fendant purchased these old, worn-out shoes, ground them to powder, mixed them with coal tar, litharge, resin and lamp-black and made rubber shoes therefrom. Respondent was held not to infringe. Ooodyear et al. v. Beverly Rub- ber Co., 1 Clifford, 348.— Clifford, 1859. 79. A patent owner " having manufactured the mattrial and sold it for a satisfactory com- pensation, whether as material or in the form of a manufactured article, the patentee, so far as that quantity of the product of his Invention is concerned, has enjoyed all the rights secured to liim by his letters-patent ; and the manufactured article, and the material of which it Is composed, go to the purchaser for a valuable consideration, discharged of all the rights of the patentee pre- viously attached to it, or impressed upon it, by the act of Congress under which the patent was granted." — lb. ■ 80. " In order to determine whether the mechanism of any other machine is the same as the plaintiff's, we may not only look at the mechanism itself, that is, the devices and ar- rangement of them, but also at their mode of operation, and their effects or results. If the mode* of operation be different, it is evidence that the mechanism is different. Or, if the re- sult is different, then, reasoning from effects to causes, we may presume that some new insiru- mentality has been introduced. If, upon ex- amining the mechanism, we find that it is sub- stantially different in two machines, then they are not the same, although they may produce the same result. That would be the common case where the same end is attained by different processes or instrumentalities. But if a ma- terially different result is reached, it is evidence of some new cause or means, although the mechanism may apparently be substantially the same. Hence, a greater degree of utility being achieved by machines is evidence, and sometimes conclusive evidence, of novelty in the means or instrumentalities which are used." Eames v. Cooke, 2 Fish. P. C. 146.— Spkagde, 1860. 81. Complainants' patent was for an improve- ment In fireplaces, consisting of the combina- tion of different elements. One of the elements being already in existence, defendant added the other, and the court doubted whether defendant infringed. Dodge et al. v. Card, 1 Bond, 393. — Leavitt, 1860. 82. An action can be sustained for the infringe- ment of either claim of a patent. Lee et al. v. Blandy etal., 1 Bond, 361.— Lbavitt, 1860. 83. It " is familiar law that the jury are not to inquire whether the two things are identical in structure, form, or dimensions, but whether they involve substantially the same mechanical principles. It will be palpable to the jury that it would be a reproach to the patent system to say that the rights of the patentee may be vio- lated or infringed by a mere colorable pretence, or by the use of a thing wliich, having a differ- ent appearance, nevertheless involves essentially the principles of the patented invention." Jud son V. Cope et al., 1 Bond, 327. — Leavitt, 1860. 84. "It is not necessary to constitute infringe- ment that a man should work by the specifica- tions contained in the patent. He might not even know that there was sucji a patent, and yet infringe it." Matthews v. Skates et al., 1 Fish. P. C. 603.— Jones, 1860. 85. If defendants have taken what belongs to complainant "they have infringed, although with the improvements the machine may be much more useful than it would be without them. This is a well-known principle of patent law." Howe^. Morton et al., 13 M. L. R. 70. — Spkagub, 1860. 86. A patent is infringed if one claim thereof is infringed. Singer et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 87. " Where there is a charge of infringement, it is within the power of the party charged to bring into court the article he uses, so that the court can see what he does use. It is his duty to tell the court what he uses and to describe it." My V. Monson & Brimfield M'f'g Co., 4 Fish. P. C. 64.— Spkagub, I860.. 88. " When the plaintiff alleges that defend- ant uses a certain machine which he describes, and defendant does not disprove or deny, it is an admission that he uses such a machine. ' ' — lb. 89. Goodyear conveyed to A the right to use his patented compound, known as " vulcanized india-rubber," in the manufacture of "hose pipe and tube," or "conduit hose pipe and tube," and no further. He conveyed to B the exclusive right to use the said rubber, ' ' in com- bination with all wringing, washing, and starch- I ing machines." The licensee, A, sold rubber I pipe to C, who used it in the manufacture of ! wringer rolls. C was held not to be an in- I fringer. Metropolitan Washing Machine Co. v. Earle et al., 3 Wall., Jr., 320.— Gbibr, 1861. 90. A patentee licensed a railroad company to use his patent on brakes. The railroad com- pany farmed out the railroad to one of its cred- 342 INFRINGEMENT. itors, and this creditor was sued for inf riiig«ment. Held not to infringe. Emigli v. Chamberlain, 1 Bissell, 367.— Miller, 1861. 91. The respondents being regularly engaged in manufacturing, contended that the alleged in- fringing acts were done simply by way of ex- periment. The court held them to be infringers. Poppenhusen v. Falke et al., 4 Blatch. 493. — Shipman, 1861. 93. " It has been held^ and no doubt is well settled, that an experiment with a patented ar- ticle for the sole purpose of gratifying a philo- sophical taste or curiosity is not an infringe- ment of the rights of the patentee.'' — lb. 93. " The addition of a useless appendix to a machine or a useless element to a process pro- tected by a patent does not defeat the charge of infringement. ' ' — lb. 94. The question in all cases where infringe- ment is disputed is, " Whether by mere change of form the substantial, the essential part of the combination is retained ? And perhaps no bet- ter criterion can be adopted than to determine whether, in the change that is made, there is an exercise of mere mechanical skill or inventive power. If the former merely, then it may, with confidence, be declared that the substantial, the essential part of the combination is not changed ; if the latter, then the principle is not the same." Case V. Brown, 1 Bissell, 383. — Drummond, 1863. 95. As regards the result attained by a pat- ented machine, " any one can produce the same results by other and different modes, and still not violate the claim of the plaintiff. In order to constitute a violation there must be a use of tlie same method substantially as that adopted by the plaintiff." — lb. 96. " But a mere change of form — for exam- ple, in the lever and its mode of operation, the adoption of some equivalent suggested by mere mechanical skill — would not prevent it from be- ing an infringement ; otherwise, if the change were one of substance and requiring the exercise of inventive power." — lb. 97. " The patent itself, with all the privileges which it confers, is the creature of the statute ; and it is clear there can be no remedy for the violation of a patent except as it is conferred by the statute. ' ' Jacobs v. Board of Commissioners of Hamilton County, 1 Bond, 500.— Leavitt, 1863. 98. The burden of proof is upon the com- plainant to show infringement by defendant. Hayden v. »u.ffolk Mf'g Co., 4 Fish. P. 0. 86. — Sprague, 1863. 99. Complainant licensed a railroad company to use a patent on brakes. The road was af ter^ ward consolidated with other roads, and the im* provement used on the whole consolidated road. The use on other than the old road was held to be an infringement. Emigh v. G. B. & Q. B. R. Co., 1 Bissell, 400. -Drummond, 1863. , 100. "Where A sues B for the infringement of a patent, and B's machine is licensed under the patent of 0, who receives royalty from B, C. is not, on that state of facts, an infringer. Hus- sey V. Bradley et al., 5 Blatch. 134.— Hall, 1863. 101. " Every man has a right to make an im- provement in a machine and evade a previous patent, provided he does not invade the rights of the patentee." Bm-r v. Duryee, 1 Wallace, 531.— Bup. Ct. 1863. 103. The granting of a patent to defendants for their machine is prima facie evidence that defendants' machine does not infringe complain- ant's prior patent. Burden v. Corning et al., 3 Pish. P. C. 477.— Nelson and Hall, 1864. 103. Where a party is licensed to make certain goods under a patent, he is an infringer if he makes other goods under that patent, Ooodyear et al. V. Providence Rubber Co. et al., 3 Clififord, 351.— Clippord, 1864. 104. " The improvement of one element of a combination, though meritorious, does not give the right to use or appropriate the original com- bination. " Stainthorp et al. v. Humiston, 4 Fish. P. C. 107.— Hall, 1864. 105. The president of a railroad made a con- tract with another person to furnish certain cars containing a certain patented improvement. The cars were furnished provided with such improve- ment. The making thereof was held not to be any infringement of the patent by the president. Lightner v. Brooks, 3 Clifford, 387. — Clifford, 1864. 106. " Where parties contract for implements, machines, or structures to contain one of the modern patented improvements, without knowl- edge that the contractor is an infringer or in- tends to use the improvement without authority, it is not the just and legal implication from the contract that the party ordering the article con- templates that the contractor will violate the rights of the patentee, or that he thereby com- mands or directs an infringement." — lb. 107. Although the president of a railroad company may be an agent of the railroad com- pany for the purpose of contracting for rolling stock, it does not follow that he is the general agent of the corporation.— 7J. 108. " Where the patentee is the original in- ventor of that which is described in his patent as his inventipn, he has the right to treat as in- IlSrPEINGEMENT. 343 fringers all who make and sell substantially the same thing, even though the infringing machine or structure may be an improvement on the one patented." Forbes et al. v. Barstow Stow Co., 3 Clifford, 379.— Clifford, 1864. 109. "The defence that the article produced is not as good as the patented article is . untenable and inadmissible, especially if it ap- pear that it embodies all the peculiarities or char- acteristics •which distinguish the article alleged to be infringed. " — lb. 110. Infringement is a wrongful act in the nature of a trespass. Union Sugar Refinery v. MattMessen, 3 Fish. P. C. 600. — Clifford, 1865. 111. Stamping the date of complainant's pat- ent upon defendants' goods under a license is evidence that defendants' goods come within the scope of complainant's patent. Jones v. Van- Mrket al., 3 Fish. P. C. 586.— Grier, 1865. 113. " It cannot be admitted that an infringer can successfully defend himself against the charge of infringement by the allegation and proof that his machine is not as good as that of the inventor whose right he has invaded. The rights of the inventor are oftentimes affected as injuriously by the sale of poor machines in the market as by those made more strictly in con- formity to his patent." Roberts v. Harnden, 3 Clifford, 500.— Clifford, 1865. 113. " The patent laws of the United States afford no protection to inventions beyond or out- side the jurisdiction of the United States ; but this jurisdiction extends to the decks of Ameri- can vessels on the high seas, as much as it does to all the territory of the country, and for many purposes it is even more exclusive. ' ' Oardiner v. Howe, 2 Clifford, 463.— Clifford, 1865. 114. Plaintiff's jsatent was for knitting-ma- chine needles ; the claim of the patent was for " the application of a latch or tongue to the hook of the needle." Defendant purchased one of the machines accompanied by the patented needles ; when the needles were worn out de- fendant made new ones. Defendant was held to infringe. Aiken v. Manchester Print Works, 3 Clifford, 485.— Clifford, 1865. 115. In an equity action an equitable right under the patent is a sufHcient defence. Cliase et al. V. Walker et al., 3 Fisli. P. C. 130.— Cad- WALADER, 1866. 116. Sales of infringing machines by a party who has no interest therein amount to infringe- ment. Potter et al. v. Crowell et al., 1 A-bbott, 89.— "WiTHET, 1866. 117. " The man who has made the first in- vention has made it for all the uses to which it is applicable. " Woodman y. Stimpson,Z'Fis\\. P. C. 98.— Lowell, 1866. 118. Where a bill of complaint explicitly charged infringement, and one witness for com- plainants explicitly testified thereto, and there were corroborating circumstances, infringement was held to be established. Goodyear et al. v. Berry, 3 Bond, 189.— Leavitt, 1868. 119. "The act of Congress confers upon the patentee and his assigns the exclusive right to make, to use, or to sell to others to be used, the article patented. It is, therefore, an infringe- ment to make or manufacture a patented arti- cle, though it is never used by the maker. It is likewise an infringement to use a patented article, though made by another. It is also an infringe- ment to sell to others the article when it is man- ufactured by another. The law vests the ex- clusive right to do all these three things in the patentee, and hence for another to do one or all of them is an infringement." Saseldeny. Og- den, 3 Fish. P. C. 378.— Sherman, 1868. 130. Although a license may give to a licensee the option of taking a new license when it ex- pires, yet if the licensee do not take such a li- cense, but refuses so to do, the licensee becomes an infringer by continuing to work under the patent, even though willing to stand by the terms of the old license. England v. Thompson et al., 3 Clifford, 371.— Clifford and Lowell, 1869. 131. A patent in suit was for defensive ar- mor for marine or land batteries, and consisted of iron armor plates laid in the usual way against the outer timbers of the vessel. The defendants acted as the agent of the Government in procur- ing such wooden armor and outside plating to be put on. The work was done by the day's work, and by the pound ; the Government paid the bills through the defendants. Defendants were held not to infringe, the court saying : " To hold that workmen and employes of the Government, who do work for it upon a vessel owned by it and are paid by it for doing such work, . . . can be held liable . . . for infring- ing a patent . . . would be, in effect and sub- stance, to allow the Government itself to be sued, in the guise of a suit against its workmen, and would lead to embarrassments of the opera- tions of the Government which might prove of serious detriment." Heaton et al. v. Quintard et al., 7 Blatch. 73.— Blatchford, 1869. 133. " There are always those who are ready to gather where they have not sown. The num- ber and ardor of the conflicts is usually in pro- portion to the value of the prize at stake.'' Rubber Go. v. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 344 INFKINGEMEJSTT. 133. The city of Louisville advertised a con- tract for the laying of some Nicholson patent pavement. A, a licensee under the patent, per- mitted a contractor, B, to lay the pavement, giving notice that he should still hold the city. The defendant city was held not liable. Bigelow V. City of Louismlle, 3 Fish. P. C. 603.— Bal- lard, 1869. 124. The possession of a patent by the de- fendants, for their infringing device, does not constitute a defence. Doughty v. Westetal., 6 Blatch. 429.— Blatchford, 1869. 125. Additions to a patented device do not avoid infringement. Howes v. Nute, 4 Cliff. 173.— Clifford, 1870. 126. " Serious doubts were formerly enter- tained whether the letters-patent of the respond- ent were admissible in any view of the case, and it is still the settled rule that the question of in- fringement cannot be controlled or materially affected by such consideration." Goodyear Dental Vulcanite Co. et al. v. Gard)ier, 3 Clif- ford, 408.— Clifford, 1870. 127. "It is a familiar rule that a patent for an improvement does not, per se, give the right to use the thing improved." Arkel et al. v. J. M. Surd Paper Sag Co., 7 Blateh. 475.— Wood- ruff, 1870. 128. " The Government cannot, after the pat- ent is issued, make use of the improvement any more than a private individual without license of the inventor or making compensation to him." United States v. Burns, 12 Wall. 246. ^Sup. Ct. 1870. 129. A city bought a patented coupling in question before the reissue of the patent in suit, and was held liable for the use thereof after the reissue. Bliss v. City of Brooklyn, 8 Blatch. 533.— Benedict, 1871. 130. The owner of a patent for an improve- ment in the manufacture of sewing silk, for the consideration of one thousand dollars granted unto " Howarth & Co. the right to use the aforesaid invention for the purpose of manufac- turing a quantity of silk not exceeding one hundred [100] pounds per week during the term for which said letters-patent are granted." The Crm of Plowarth & Co., consisting of two part- ners, subsequently dissolved, one of the pai'tners i taking the business, and this partner continued the use of the invention in the shop of, and de- livered the whole product to, a third party. In- junction against his partner was refused. Beld- ing et al. v. Turner, 8 Blatch. 821. — Siiipman, 1871. 131. In a court of equity any equitable title under the patent in suit is as available as is a legal title, so far as defendant is concerned. Continental Windmill Go. v. Empire Windmill Co., 8 Blatch. 295.— Woodruff, 1871. 133. " The mere making of a machine, or the selling of a machine to others to use, or the use of a patented machine, is an infringement of the patent." Carter et al. v. Baher et al., 1 Sawyer, 513.— Sawyer, 1871. 133. A person cannot, without infringement, " use a patented device by constructing it in a slovenly or imperfect manner, so that it will ac- complish the same kind of result as that intend- ed by the inventor, but not so perfectly. " Chi- cago Fruit House Co. v. Busch et al., 2 Bissell, 473.— Blodgbtt, 1871. 134. " When a patented product passes law- fully into the hands of a purchaser without con- dition or restriction, it is no longer within the monopoly or under the protection of the patent act, but outside of it." Adams v. Burke, 1 Holmes, 40.— Sheplbt, 1871. 135. Where defendants claim under patents of their own, they are prima facie protected in their rights. Brown v. Selby et al., 3 Bissell, 457. — Drummond, 1871. 136. Applying a patented improvement in folding beds at both ends of the bed, instead of at one end only, does not avoid infringement. Kittle et al. v. Frost et al., 9 Blatch. 314.— Blatchford, 1871. 137. Where defendant's machine, though otherwise a substantial reproduction of com- plainants' patented machine, is so aiTanged as to produce the result imperfectly or partially, defendant does not thereby avoid infringement. Union Paper Bag Mach. Co. et al. v. Binney, 5 Fish. P. C. 166.— Lowell, 1871. 188. Complainants' patent for a composition of matter stated the proportions of the ingredi- ents approximately. Defendants' answer ad- mitted using the ingredients, but averred that the proportions were different. No other evi- dence being offered, the court held infringement not proved. Francis et al. v. Mellor et aZ.,\ Pa. Leg. Gaz. Rep. 291.— McKennan, 1871. 139. " It cannot be that where a useful ma- chine is patented as a combination of parts, two or more can engage in its construction and sale, and protect themselves by showing that, though united in an effort to produce the same machine and sell it and bring it into extensive u.se, each makes and sells one part only, which is useless without the others ; and still another person, in precise conformity with the purpose in view, puts them together for use. If it were so, such patents would, indeed, be of little value. In such case all are tort feasors, engaged in a com- INFRINGEMENT. 345 mon purpose to infringe the patent, and actual- ly, by their concerted action, producing that re- sult. In a suit brought against such party or parties, a question might be raised •whether all the actors in the wrong should be made parties defendant ; but . . . even at law, and certainly when non-joinder was not pleaded, the want of all parties should be no defence. Each is liable for all the damages." Wallace et al. v. Holmes etal., 9 Blatch. 65.— Woodruff, 1871. 140. The patent in question was for a lamp ■ burner, and the combination claimed included the chimney, which defendants did not sell. De- fendants were held to infringe. — lb. 141. Although defendant may have a patent for his device, and his device may be an im- provement over complainants', these facts do not prevent him from being an infringer. Fales et al. V. WentwoTth, 1 Holmes, 96. — Shbplby, 1873. 142. Defendants are none the less infringers because the complainant may be infringing a patent of defendants. Young v. Lippman et al., 9 Blatch. 277.— Blatchford, 1072. 143. " A patent for a device cannot be avoid- ed by dividing it into two parts, which, when combined, produce the same result in substan- tially the same way." Wheeler, Jr., v. Clipper Mower & Beaper Co., 10 Blatch. 181. — Wood- ruff, 1872. 144. " Section 9 of the act of March 3d, 1837, ... is designed to allow a patentee to recover on one claim of his patent, notwithstanding other claims in it are void for want of novelty. But it requires that the parts claimed without right, and the parts rightfully claimed, shall be definitely distinguishable, as a matter of fact, on the face of the claims — that is, be definitely dis- tinguished from each other in the claims." Rumford tiliemical Works v. Lauer, also Becker, 10 Blatch. 122.— Blatchford, 1872. 145. The claim in complainants' patent for fire-arms was : "'The combination, substan- tially as set forth, of the breech-closing piece, moving longitudinally with the barrel, tlie car- tridge chamber at the butt of the barrel, and the reciprocating extracting hook, arranged in such a manner that its bill enters within the periphery of the said chamber, so that it may engage with the flange of the cartridge therein, when the breech is closed by the forward movement of the closing piece, even though the cartridge be not expanded.' " Defendant sold the gun but not the cartridge, and was held to infringe. lUn- wick et al. v. Poind, 10 Blatch. 39.— Blatch- ford, 1872. 146. " In a court of equity, an equitable title is suflicient, as against the patentee and those claiming under him, with notice of the com- plainant's rights." Buggies v. Eddy et al., 10 Blatch. 53.— Woodruff, 1872. 147. Defendants held a license to use a pat- ented machine on their own premises. Another party used it on other premises not with de- fendants' consent, but with defendants' acquies- cence. Defendants were held to infringe. Steam Cutter Co. v. SJieldon et al., 10 Blatch. 1. — AVOODRUFF, 1872. 148. Defendants had a license to use a machine, and used it ; they had a right to use additional machines upon making certain payments. They used other infringing machines, and after suit was brought tendered the patent owners money as said payments. Defendants were held to in- fringe. — lb. 149. Where a claim to certain features was limited to their use in a, bridge, and defendants simply sold such features, defendants were held not to infringe. Keystone Bridge Co. v. Phmnix Iron Co. et al., 5 Fish. P. C. 468.— McKennan, 1872. 150. ' ' If the question was between a single patented device, conceded to be new, and a de- vice claimed to infringe because an equivalent, the alleged infringer could not protect himself by showing that, although his device was an equivalent of the patented device in all its func- tions, and in its construction and mode of oper- ation, yet by other or additional features it pos- sessed further and other useful functions." Sarven v. HaM et al., 9 Blatch. 524.— Wood- ruff, 1873. 151. " If a party adopts a dififerent mode of carrying the same principle into effect, and the principle admits of different forms, there is an identity of principle, though not of mode. . . And it makes no matter what additions to or modifications of a patentee's invention a de- fendant may have made, if he has taken what belongs to the patentee he has infringed, al- though with Iiis improvement the original ma- chine or device may be much more useful." McCornb et al. v. Brodie, 1 Woods, 153.— Woods, 1873. 153. ' ' Tlie man who made the first invention has it for^all the uses to which it is applicable." —n. 153. " When the means, devices, and organi- zation are patented, the patentee is entitled to the exclusive use of this mechanical organization, device, or means for all the uses and purposes to which it can be applied — to every function, power, and capacity of his patented machine or device — without regard to the purposes to which 346 INPEINGEMENT. he supposed originally it was most applicable." —lb. 154. " A use of a patented invention of the patentee is not justified by any innocence of de- sign on the part of the defendant." Hawesv. Washburn et al., 5 O. Q, 491. — Woodeupf, 1873. 155. If any claim of a patent is infringed, the patent is infringed. Weatlake v. Cartter et al., 6 Fish, p! C. 519. -Treat, 1873. 156. Where A has one patent, and B has pat- ent for improvements thereon, neither can (un- licensed) use the patent of the other ■without in- fringing. Baehelder v. MouUon et al., 11 Blatch. 304.— Blatohford, 1873. 157. After the Patent Office has decided that there is no conflict between the claims of two patents, that judgment is prima facie evidence of no infringement. Smith et al. v. Woodruff, 1 MacArthur's P. C. 459.— Humphreys, 1873. 158. Although defendants may graft valuable improvements upon the patented improvement, they do not thereby escape infringement. Am. Nicholson Pavement Co. v. City of Elizabeth et al., 6 Fish. P. C. 424.— Nixon, 1873. 159. Where two parties have been jointly in- fringing, and one of them has a release, such release does not discharge the other infringer. Ingels v.' Mast, 6 Fish. P. C. 415.— Swing, 1873. 160. Where parties having a license under a patent transcend the light given hy the license they infringe. Wood v. Wells etal., 6 Fish. P. C. 382.- Woodruff, 1873. 161. Where defendant's foreman had sold an infringing article, and defendant had received the profits therefrom, defendant was held to be an infringer. Jones et al. v. Sewall, 3 Clifiord, 563.— Clifford, 1873. 162. Defendants do not avoid infringement because their device is so organized as to attain the desired useful result in a less degree than such result is attained in the patented device of complainant. Hamilton v. Ives et al., 6 Fish. P. C. 244.— LoNGTEAR, 1873. 163. " The sale by a person who has full right to make, sell, and use such a machine, carries with it the right to make use of that machine to the full extent to which it can be used in point of time." Adams v. Burks, 17 Wall. 453. — Sup. Ct. 1873. 164. A, as a licensee under a patent, had the right to manufacture, sell, and use the patented coffin lids within ten miles of Boston. B, living outside that circle, purchased one of the patented improvements in Boston and used it outside the circle. B was held not to infringe. The scope of the decision was specially limited to articles which perish in the first use thereof. — lb. 165. Defendants, being sued for infringement of a nickel-plating patent, showed that his solu- tion had some ingredients not described in the patent. The court found these ingredients to be inert and the defendant an infringer. United Nickel Co. v. Keith, 1 Holmes, 328.— Sheplet, 1874. 166. Where a party's manufacturing rights are limited by a license, and at his insolvency an- other party buys the manufactures in question) the latter party, in selling these manufactures, would be an infringer in any case where the party first mentioned would be an infringer. Moody V. Tdben, 1 Holmes, 825.— Sheplet, 1874. 167. The patented machine was a printing- press. The defendants bought thpir press of a company which had the power to convey to them the machine, with the right to use it anywhere in the United States. Defendants were held not to be infringers, the court saying : ' ' The mere fact that the patentees, in violation of a covenant which they had made with other parties not to do so, had conveyed to them the unrestricted right to use the patented inventions, did not make them infringers of any right under the letters-patent." Hill et al. v. Whitcomb et al., 1 Holmes, 317.— Shepley, 1874. 168. The question of infringement does not depend upon what capacity the device used by defendant has or has not outside of the condi- tions in which defendant intended to operate. Russel & Brwin M'fg Co. v. P. Burnham M'fg Co., 113 U. S. 59.— Sup. Ct. 1885. 310. When the patentee of an article has sold the same article without restrictions or condi- tions in a foreign country, he who bought such an article and brought it home cannot be treated as an infringer. Halliday et al. v. Matheson et al., 23 Blatch. 289.— Wallace, 1885. 311. " When the owner sells an article without any reservation respecting its use or the title which is to pass, the purchaser acquires the whole right of the inventor in the thing sold — the right to use it, to repair it, and to sell it to others, and second purchasers acquire the rights of the seller, and may talse the article wherever the first purchaser could have lawfully taken it if he had not parted with it." — IT). 812. Where an inventor, employed by a firm, permits that firm to use the afterward patented machine before application, that machine is not within the afterward granted patent. Duffy v. Reynolds et al., 24 Fed. Rep. 855. — Nixon, 1885. 313. Although the machine used by defendant may be a patented one, that, of itself, does not remove it from the category of infringements. Filley v. Littlefield, 25 Fed. Rep. 383.— Treat, 1885. 314. " Each claim is, in efEect, a separate and distinct patent, and the right to use one patent does not carry with it the right to use the others without a further license." United Nickel Oo. V. California Electrical Works, 35 Fed. Rep. 475.— Sawtbr, 1885. 315. A nickel-plating solution being covered by one claim of a patent and its use being cov- ered by another claim, it was held that the mere purchase of the solution from one authorized to sell it did not carry the right to use it. — lb. 316. Although one claim of the Adams patent for nickel plating specifies the mode of prepar- ing " the double chloride of nickel and am- monia," he who buys the prepared nickel and uses it in accordance with the remainder of the claim is an infringer. — lb. 317. Where the evidence of infringement is not certain, but points to defendant, then, in the absence of any evidence to the contrary, it will be accepted as sufficient against defendant. Dreyfus v. Schneider, ^'^5 -Ted.. Rep. 481. — Colt, 1885. 318. As to evidence not thoroughly satisfac- tory which was accepted by a court as to who was the infringing party, see — . Peterson et al. V. Simpkins, 35 Fed. Rep. 486.— Treat, 1885. 319. The court being of the opinion that de- fendants' machine was in its mode of operation like that of complainant's patented machine, said : ' ' The burden is on the defendants to clear- ly establish this point." Nat'l Hat Pouncing Maeh. Co. v. Thorn et aX., 35 Fed. Rep. 496.— Colt, 1885. 830. It does not follow from defendant's pos- session of a patent for his device that he has not infringed complainant's patent. Tate v. Thames, 35 O. G. 258.— Wallace, 1885. 331. Where the state of the evidence is such as to leave doubt in men's minds, the doubt will be resolved in favor of defendant, and defendant held not to infringe. Mallory M'fg Co. v. Hick- ok et al., 25 Fed. Rep. 827. -Shipman, 1885. 822. Defendants' machine may exhibit an im- provement over complainant's patented machine, but that fact will not necessarily remove it from the category of infringements. Wilson v. Cub- ley etal, 26 Fed. Rep. 15a— Blodgett, 1886. 333. Complainant's patent for an improvement in hammocks was for the combination of the hammock, the suspension ropes and certain de- tachable standing blocks. Defendants neither made nor sold hammocks, but made the blocks and sold them to dealers in hammocks. They were held to infringe. Traverse v. Beyer et al. , 23 Blatch. 423.— Wallace, 1886. 324. "Two patents may both be valid when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the other's consent." Cantrill et al. v. Walliek, 117 U. S. 689.— Sup. Ct. 1886. 325. Where there is a patent for an invention, and a subsequent patent for an improvement thereon, it does not lie in the mouth of an in- ifringer of the second patent to set up the exist- ence of the first patent as an excuse for infring- ing the second. — /J. 336. Although defendant's device may be in some respects better than that of complainants, this cannot relieve defendant from the charge of infringement if the devices ai'e substantially alike. — lb. 327. He who sells a compound knowing that it cannot be applied without making the user a trespasser is himself an infringer. Alabastine Co. V. Payne, 27 Fed. Rep. 559.— Coxe, 1886. 828. Where A owns certain territory under a patent and B owns certain other territory under the same patent, and A manufactures his goods within his own territory and sells and delivers them within B'^ territory, A is an infringer of B's rights. Bobbie et al. v. Smith et al., 27 Fed. Rep. 656.— Coxe, 1886. INFEINGEMENT. 357 329. Where A owns certain territory under a patent and B owns certain other territory under the same patent, and A sells the patented goods in his own territory to parties whom he knows will take them into the territory of B, he is not an infringer of B's rights. — lb. 330. " The grantee of a particular territory is ... at liberty to sell within that territory, and having the right, it cannot be curtailed, though the purchaser takes the goods beyond the pre- scribed limits. This is so, even though the ven- dor knows that the purchaser intends so to act. " —lb. 331. It is not necessary, in order to make a party an infringer, that his result should be the same in degree as that of complainant's patent, but it must be the same in kind. May v. County of Fond du Lac, 37 Fed. Rep. 691.— Dyer, 1886. 333. One does not escape infringement simply by improving upon a patented invention. Oiurch V. Spaulding, 28 Fed. Rep. 101.— Colt, 1886. 333. Where complainants' patent is for a com- bination, and the defendants sell only a part of that combination, which part is susceptible of a perfectly innocent use, and there is no direct proof that defendants ever put it to an infring- ing use by sale to any one, infringement is not proved. Snyder et al. v. Brunnell et at., 29 Fed. Rep. 47.— CoxE, 1886. 334. " The provision of the law that no person shall take, or use, or infringe the rights of a patentee does not depend upon the knowledge on the part of the public of the patent itself ; that is to say, an actual knowledge." Royer et al. V. Coupe, 29 Fed. Rep. 858. — Carpenter, 1886. 335. "In the case of a valid original patent for a machine, and a valid patent for an useful improvement upon that machine, the parties are in this position : that the first patentee cannot use the second machine without the consent of the second inventor, and the second inventor cannot use his own machine without the consent of the first inventor ; and, if either of them violates these rules, he violates the law, and is liable to an action in consequence." — lb. 336. Where a licensee has a license to sell only to persons who have a license to use, he is an infringer if he sells to other persons. Willis et al. V. MeColUn, 38 O. a. 1017. -Butler, 1886. 337. Where a licensee repudiates his license he can be sued either on the contract or as an infringer. Starling v. St. Paul Plough Works, 32 Fed. Rep. 290.— Nelson, 1887. 338. " The patentee's exclusive right is to the manufacture, use, and sale of his invention, and for any and for all purposes." Cincinnati Ice Machine Co. v. Fosa- Schneider Brewing Co., 31 Fed. Rep. 469.— Sage, 1887. 339. Where two different parties make up the parts of a patented thing with knowledge of the purpose to be served, both parties are infringers. Celluloid M'fg Co. v. Am. Zylonite Go. et al., 30 Fed. Rep. 437.— Shipman, 1887. 340. Adams v. Burke, 17 Wall. 453, falls far short of holding that " the purchaser from the owner of a territorial right, within the territory, could not sell outside without Infringing upon the rights of the owner of that territory. " Hatch et al. V. Hall, 30 Fed. Rep. 613.— Wheeler, 1887. 341. The owner of a territorial right under a patent for making beds furnished " beds of the patent to dealers, to be sold outside, and " ap- peared " to have sought their custom for that purpose. They were infringers in. making the sales, and he participated in the infringement by furnishing the means for it, and aiding and abetting it. Such a participant in the tort of infringement is liable for the whole.'' — lb. 343. A suit was brought for an alleged in- fringement of a machine for counting and pack- ing envelopes, the essence of the improvement being that the machine made no count unless an envelope passed. It was in proof that defendant had built certain machines which counted at every revolution. A witness who saw some of defendant's machines thought they counted with the passage of the envelope. An expert testified that lie could not tell by seeing the operation of the machine whether it counted with every revo- lution or not. The evidence of infringement was held insufficient. Hill v. Holyoke Envelope Co., 30 Fed. Rep. 623.— Colt, 1887. 343. " Where it is proved that what a party does is done for the purpose and with the intent of aiding infringement, he is liable under the doctrine of contributory infringement." Bate Befrigerating Co. v. Gillett etal., 30 Fed. Rep. 683.— Wales, 1887. 344. A defendant company had not sold in- fringing instruments, but it had such in its office and advertised them for sale. It was held that the secretary and treasurer of the defendant company, its manager, and also Its electrician were all subject to injunction. Am. Bell Tel. Co. V. Olobe Tel. Co. et al., 31 Fed. Rep. 729.— Wallace, 1887. 345. It seems that the fact that defendants' machine is doing what complainant's machine will not is evidence tending to show that there is no infringement. Good v. Bailey et al., 41 O. G. 935.— Butler, 1887. 346. The patent in suit was the Green driven- 358 INJUNCTION— PROVISIONAL, well patent, and the claim in issue was : " The process of constructing wells by driving or forc- ing an instrument into the ground until it is pro- jected into the water without removing the earth upward, as it is in boring, substantially as herein described." It was held that the use of a well driven in this manner was an infringement. Beedie v. Bennett et al., 133 U. S. 71.— Sup. Ct. 1887. 347. Where a defendant uses the patented combination of complainant, he does not escape infringement by adding another combination thereto. Wirt v. Brown, 30 Fed. Rep. 188.— Benedict, 1887. 348. Addition to a patented article does not avoid infringement. Mlley v. Littlefleld Stove Co. et al., 30 Fed. Rep. 434. -Coxe, 1887. 349. Mere additions to a patented machine do not avoid infringement. Am. Box Mach. Co. v. Dayetal., 33 Fed. Rep. 585.— Butler, 1887. 350. Complainant brought suit for an infringe- ment of his patent on railroad car platforms, couplers, and buffers. The patentee had been in the habit of authorizing car-makers to put his patented improvements on cars, and afterward collecting for the use of the improvement of the railroad companies who used such cars. The use of such improvements on cars not thus authorized by the patentee was held to be an in- fringement. Bates, Adm'r, v. St. Johnsbury & Lake GTiamplain R. R. Co., 33 Fed. Rep. 638. — Wheeler, 1887. INJUNCTION-PROVISIONAL. " Injunction " in the Patent Acts. Act approved February 19th, 1819. Be it enacted by the Senate and House of Representatives of tlie United States of Ameri- ca in Congress assembled. That the circuit courts of the United States shall have original cogni- zance, 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 discov- eries ; 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 in equity, to pre- vent the violation of the rights of any authors or inventors, secured to them by any laws of the United States, on such terms and conditions as the said courts may deem fit and reasonable. . . [Repealed July 4th, 1836.] Act approved July 4th, 1836. Section 17. And be it further enacted, That all actions, suits, controversies, and cases arising under any law of the United States, granting or confirming to inventors the exclusive right to their inventions or discoveries, shall be origi- nally cognizable, as well in equity as in law, by the circuit courts of the United States, or any district court having the power and jurisdiction of a circuit court ; which courts shall have pow- er, upon a bill in equity, filed by any party ag- grieved, in any such case, to grant injunctions, according to the course and principles of courts of equity, to prevent the violation of the rights of any inventor as secured to him by any law of the United States, on such terms and conditions as said courts may deem reasonable. . . . [Re- pealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 55. And be it further eruMted, That all actions, suits, controversies, and cases arising under the patent laws of the United States shall be originally cognizable, as well in equity as at law, by the circuit courts of the United States, or any district court having the powers and juris- diction of a circuit court, or by the Supreme Court of the District of Columbia, or of any Ter- ritory ; and the court shall have power, upon bill in equity, filed by any party aggrieved, to grant injunctions according to the course and principles of courts of equity, to prevent the vio- lation of any right secured by patent, on such terms as the court may deem reasonable. . . . [Repealed June 33d, 1874.] Act approved June 33d, 1874. * Sec. 629. The circuit courts shall have origi- nal jurisdiction, as follows : . . . Ninth. Of all suits at law or in equity arising under the patent or copyright laws of the United States. Sec. 4931. The several courts, vested with jurisdiction of cases arising under the patent laws, shall have power to grant injunctions ac- cording to the course and principles of courts of equity, to prevent the violation of any right se- cured by patent, on such terms as the court may deem reasonable. Cases. 1. In equity the practice is to grant an in- junction upon the filing of the bill if it state a clear right, and verify the same by alRdavit. If the bill states exclusive possession, an injunc- tion follows, though the court may hav© doubts as to the validity of the patent. If defects in the patent are glaring, injunction is not granted. Where the patent is modern, and objections are made to its validity or to the specification, the INJUNCTION— PEOVISIONAL. 359 court will -wait for trial. Isaac w. Cooper etal., 4 Wash. 359.— "WAsniNGTON, 1821. 3. On bill filed and injunction moved for, complainant was required to make a special affi- davit as to his allegations, that he believed him- self the first inventor, and that there had been no prior use or publication. Provisional in- junction granted and issue at law directed. Sogers v. Abbott, 4 Wash. 514.— Wash. 1835. 3. It is not a matter of course to grant an in- junction. There ought to be little, if any, doubt in the mind of the court as to the validity of the patent. Where the patent has age and exclusive possession in its favor, the injunction is granted at first ; when recent and opposed, a trial at law must be had. Sullivan v. Bedfield et al., 1 Paine, 441.— Thompson, 1835. 4. Where the sworn bill states a clear right to the thing patented, and infringement, and the plaintiffs have been in the possession of the inven- tion in whole and in part, provisional injunc- tion will issue. But if there is reasonable doubt as to the plaintiffs' right or as to the valid- ity of the patent, trial at law will be requii-ed before injunction. Ogle et al. v. Ege, 4 Wash. 584.— Wash. 1836. 5. " The jurisdiction exercised by a court of equity in granting an injunction is in aid of the common law, and should not be asserted where the right is doubtful." Exclusive possession under the patent will sometimes warrant injunc- tion, but it is not warranted when the patent is recent, and real doubts are entertained of its validity. T homes v. Weeks et al., 3 Paine, 93. —Thompson, 1837. 6. A provisional injunction will not be grant- ed if there is unnecessary delay in applying for the same after knowledge of the infringement. Cooper V. Mattliews, 8 Law Rep. [O. S.] 413. — Baldwin, 1843. 7. Affidavits may be read in support of an in- junction, on a motion to dissolve it, on the com- ing in of the answer. Brooks et al. v. Bickriell etal., 3 McLean, 350.— McLean, 1843. 8. "In most cases the court will not enjoin until the right of complainant has been estab- lished at law. But where the injury would be irreparable, an injunction will be granted. A case of waste constitutes an exception to the general rule and also the infringement of a pat- ent."— JJ. 9. In lieu of provisional injunction, the court will sometimes order the defendants to give bond and security for any damages that may recover. —lb. 10. " Where a patent has been granted, and an exclusive possession of some duration under it, the court will interpose its injunction with- out putting the patentee previously to establish the validity of his patent by an action at law. But where the patent is but of yesterday [mean- ing that it is recent], and upon an application being made for an injunction it is endeavored to be shown, in opposition to it, that there is no good specification, or otherwise that the patent ought not to have been granted, the court will not, upon its own notions respecting the matter in dispute, act upon the presumed Validity or in- validity of the patent, without the right having been ascertained by a previous trial at law ; and will send the patentee to law and oblige him to establish the validity of his patent in a court of law before granting him the ben,efitof an injunc- tion." Washburn et al. v. Qould, 3 Story, 123, — Story, 1844. 11. " The continuance or dissolution of an in- junction is entirely within the sound discretion of the court. If the court consider the right of ^he patentee doubtful, it is not simply on that ac- count required to dissolve the injunction. Other circumstances must be considered." Orr v. Badger, 7 Law Rep. 465. — Speagub, 1844. 13. For an example of a case where there was a conti'act between the contending parties and the court, under penalty of injunction, ordered defendant to pay royalty according to his con- tract, etc., see — . Brooks et al. v. Stolley, 3 McLean, 533.— McLean, 1845. 13. "A bill will lie for an injunction if the patent right is admitted or has been established upon well-grounded proof of an apprehended intention of the defendant to violate the patent right." Wood-worth et al. v. Stone, 3 Story, 749. — Stoky, 1845. 14. For the purposes of a provisional injunc- tion, a reissued patent may be taken to be for the same invention as the original upon the authority of the Commissioner.— Ji. 15. To obtain a provisional injunction, the mere issue of the patent does not suffice. ' ' Com- plainant must furnish some further evidence of a probable right, though it need not be conclu- sive." "If the patentee . . . proceeds to put that right into exercise or use for some years, without its being disturbed, that circumstance strengthens much that the patent is good." " Seldom has a court refused an injunction . on account of the shortness of time after the grant, however brief, if long enough to permit articles or machines to be constructed by the patentee . . . and to be sold publicly and re- peatedly, and they have been sold and used under the patent without dispute." " Another species of evidence . i.; tlic fact that if the 360 INJUNCTION— PROVISIONAL. patent becomes disputed the patentee prosecutes for a violation of his patent and recovers." " Evideilce of this character . . . is not contra- dicted nor impaired at all by the judgments hav. ing been given on verdicts and defaults under agreements." Affidavits attacking the novelty of the patent, met by counter affidavits, do not make against the injunction. It is " within the sound discretion of the court whether to issue the injunction or refuse it." Orr v. Littlefield et at, 1 W. & M. IS.-WooDBDRY, 1845. 16. After a patent has been sustained in vari- ous litigations the question of its utility is not open on motion for provisional injunction. Smith et al. v. Mercer et al., 3 Penn. L. J. Rep, 526.— Kane, 1846. 17. " A special injunction in equity, like the arre&t of the process of the law may be abused to the injury of the opponent ; but it is no less, on that accojint, the duty of the judge to further them both when, in the exercise of his best dis- cretion, he belieVes they are called for by the amount of the exigency. ' ' — lb. 18. Where complainant has owned and oper- ated under a patent for many years, where the infringement is clear, and where he has brought two suits at law against the same defendants for infringement in which the jury failed to agree, provisional injunction will be granted. BiuJc V. Cobb et al., 9 Law Rep. [O. S.] 545.--Conk- LING, 1846. 19. After the validity of a patent has been sustained in numerous trials on the merits, that question may be considered settled for the pur poses of provisional injunctions. Van Hook v. Pendleton et al., 1 Blatch. 187.— Bbtts, 1846. 30. Defendants contended against a provi- sional injunction on the ground of laches on the part of complainant in bringing suit. Complain- ant meanwhile had been busy with another suit and was held not guilty of laches. — lb. 31. After a patent has been sustained in a num- ber of decisions, a court will not, on a motion for a provisional injunction, Inquire into its validity. Gibson v. Betta et al., 1 Blatch. 163. —Nelson, 1846. 22. Where a provisional injunction has been granted, it may be dissolved unless the complain- ant will institute a suit at law, before a certain time, to try the validity of the patent. Orr v. Merrill, 1 W. & M. 876.— Woodbury, 1846. 23. " An injunction, when asked before a trial and resisted, is never to issue as a matter of course till the trial. There must, in such case, in order to obtain it in advance, be proof not only of a patent, but also of some length of use jinder it, or some considerable sales of it, or some recovery establishing the validity of the patent, so as to impart to it weight or strength as valid, beyond the mere issue of it." — lb. 24. It is doubtful whether a misjoinder of parties as plaintiffs can defeat a prayer for an injunction against the use of a machine in which any such parties are interested. Woodworth et al. V. Hall et al., 1 W. & M. 348.— Woodburt, 1846. 35. "In relation to the technical objections . . . though they are to be weighed and examined, and allowed to prevail, as they must in other cases in equity, if legal, yet they ought to be treated with no particular indulgence. In ■ all inquiries in equity the leaning in doubtful points must cer- tainly be rather against than in favor of them ; and more especially must it be so in preliminary in- junctions where the decision is only temporary, and may be dissolved on motion at any time, on showing fuller proof as to anything affecting the merits of the controversy." — lb. 26. Where a provisional injunction has been granted against the infringement of a patent, it will not be dissolved upon raising doubts based upon technical objections. — lb. 37. It would be sporting with the faith and confidence due to judicial proceedings in our tribunal, to permit a machine to be used by a person claiming under another person against whom an injunction is in full force. Woodworth et al. V. Edwards et al., 3 W. &M. 130.— WooD- BORT, 1847. 28. On a motion for provisional injunction " the defendant will be permitted to file his an- swer, and affidavits in behalf of both parties will be examined on the motion for injunction." Wilson V. Stolley, 4 McLean, 273. — McLean, 1847. 29. After an injunction has been granted it is to be presumed that it was rightly granted, and the burden of proof is on defendants to over- come that presumption. Woodworth et al. v. Bogera et al., 3 W. &M. 135.— "Woodbtjrt, 1847. 30. "Thepoiver exercised under injunctions has existed from the early ages of chancery juris- diction, and is remedial and useful as a preventa- tive of injury and multiplicity of law-suits when it is properly exercised. It is also a power con- ferred upon this court in one of the earliest acts of Congress, passed after the adoption of the Constitution. " — lb. 31. A verdict in a patent suit is admissible in evidence in a suit between different parties upon the same patent on a motion for provisional in- junction. Buck et al. v. Hermance, 1 Blatch. 322.— Nelson, 1848. 32. The court will not grant a provisional in- INJUNCTION— PROVISIONAL. 361 junction when the effect thereof will be to en- force a forfeiture. Morse v. O'Rielly, 4 Penn. L. J. Rep. 75.— Kane, 1848. 33. " An injunction cannot be awarded at the instance of a stranger ; and a patentee who has assigned his interest is nothing more." — lb. 34. " The special injunction in equity, like the arrest of mesne processes at law, may be abused to the injury of an opponent ; but it is no less on that account the duty of the judge to further them both when, in the exercise of his best dis- cretion, he believes that they are called for by the merits and the exigency." Wilson -v . Bar- num, 1 Wallace, Jr., 347.— Kane, 1849. 35. For an example of bond for an accounting ordered to be subotituted for a provisional in- junction, see — . lb. 36. The possession by defendant of a patent for his device will not prevent the issue of a pro- visional injunction against the device of that patent. It simply indicates the opinion which the highly respectable and skilled officers of the Patent Office have formed on an ex parte exam- ination. Wilson V. Barnum, 1 Wall., Jr., 347. —Kane, 1849. 37. Where a case is appealed from the Circuit Court to the Supreme Court, and injunction by the court below has stopped defendant's ma- chine to his great damage, and left him without remedy, such hardship " is an unanswerable ob- jection to the operation of the injunction until the matters shall finally be adjusted. " Barnard et al V. Gibson, 7 Howard, 650. — Sup. Ct. 1849. 88. " It (an injunction) is either provisional or perpetual. The first being common or .special — common, such as are granted upon the de- fendant's default, either in appearing or answer- ing, and are only applicable to restrain proceed- ings in the courts of common law — special, when granted upon the special grounds arising out of the circumstances of the case. Injunctions of this description are issued sometimes on tlie merits disclosed by the answer, sometimes on affidavits before the answer is filed, and some- times even without notice and before defendant has appeared." Mott v. Bennett, 2 Fish. P. C. 643.— Wayne, 1849. 39. The rule of comity between courts has no application to motions for injunctions where er- ror may be followed by irremediable mischief. Many v. Bizeretal., 1 Fish. P. C. 31.— Sprague, 1849. 40. Where defendants have been ordered to render a monthly account in lieu of an injunc- tion, if they -fairly comply with the terms of the order, an injunction will not be substituted therefor. Wilder \. Qayleret al.,\'&\&'ix\i. 511. —Nelson, 1849. 41. A complainant having prevailed on his patent in one circuit, having been defeated thereon in another circuit, and at a third trial the jury having been divided, in a fourth case pro- visional injunction was denied and account ordered, and an issue made up for a jury. Al- len V. Sprague et al., 1 Blatch. 567. — Nelson, 1850. 42. After a patent has been sustained in vari- ous litigations, and defendants adjudged to in- fringe, a bond and- accounting will not be substi- tuted for an injunction. Gibson v. Van Dresar etal., 1 Blatch. 583.— Nelson, 1850. 43. Where, upon a motion for provisional in- junction, the validity of plaintiff's patent has been established by nvimerous verdicts, the only inquiry will be whether the defendants infringe. Blanclmrd^. Beeves et al., 1 Fish. P. C. 103. — Gkiek, 1850. 44. A court will not grant a provisional in- junction on evidence which, though formally sufficient, has not produced conviction on the mind. — lb. 45. It is a proper rule to consider an affidavit and answer, especially if accompanied by one or two depositions of witnesses, denying the in- fringement as conclusive against motion for pro- visional injunction. But this is not the case where the answers or affidavits are equivocal or evasive, or disclose facts showing the conclusions to be clearly erroneous. Parker y. Sears et al., 1 Fish. P. C. 93.— Grier, 1850. 46. " No interlocutory injunction should issue unless the complainant's title and the defendants' infringement are admitted, or are so palpable and clear that the court can entertain no doubt on the subject. . . . The court is not bound in this stage of the cause to decide doubtful and difficult questions of law, or disputed questions of fact, nor exercise this high and dangerous power [if exercised rashly] in doubtful cases, be- fore the alleged offender shall have an opportu- nity of a full and fair hearing. " — lb. 47. It is a sufficient reason for refusing pro- visional injunction that the question of infringe- ment, even when the facts are admitted, is far from being clear and devoid of doubt. — lb. 48. Among reasons for refusing provisional injunction arc [1] ' ' because the verdicts estab- lishing the complainant's title have been obtained on inconsistent and contradictory claims, so that the court cannot say with certainty, what is or what is not an infringement of the patent," [3] because allegations of exclusive possession on the complainant's part are met and avoided by 362 INJUNCTION— PEOVISIONAL. allegation and proof of a more peaceable posses- sion by defendants. — lb. • 49. " Tlie chief object of issuing such writs [provisional injunctions] before the final hearing of the cause, is to prevent irreparable mischief, not to give the complainant means of effecting a compromise on his own terms, from the inev- itable injury that defendants must suffer by the stoppage of their mills and manufactories." — lb. 50. ' ' There may be, and often are, cases where the patent is for a machine to make some articles of manufacture or merchandise in a cheaper method than was before known, and where the source of profit to the patentee arises from his monopoly of the articles, and having no competition in the market. In such a case, the damages to the patentee by a piracy of his invention might be very great, and the court would issue an injunction on a plain case in the last month or week of the patent's life, or even after the time limited for its expiration, to re- strain the sale of the machines or articles pirati- cally manufactured in violation of the patent while it was in force. ' ' —Ih. 51. The standing-by of a patentee for " many years, without complaint or demand of compen- sation. Is conclusive evidence that a continuance of a use of his invention, for ;i few weeks or even months longer, if paid for in the end, will not be an injury of such an irreparable nature as to require this sharp and hasty remedy. " — lb. 53. " The issuing of an interlocutory injunc- tion is always a matter of discretion 'with the court, and depends upon the peculiar circum- stances of each case ; to suspend the operation of a single mill or manufactory, but for a week or two, because some wheel, bucket, or other small portion of its machinery may chance to infringe some dormant patent, would be a doubtful exercise of discretion where the bene- fits to result from it to the complainant are so comparatively trifling, and his loss, if any, so perfectly capable of compensation. How much more so when we are called upon to stop the operation of one hundred." — lb. 53. Upon a motion for a provisional injunc- tion, where a prior adjudication is relied upon, the bill of complaint must make averment there- of. The averment may be added by amendment. Parlcer v. Brantetal., 1 Fish. P. C. 58. — Gbieu, 1850. 54. Where the original term of a patent has expired, and it has been extended, and it has been sustained in hotly-contested litigations, it passes into the category of those which equity exerts its preventive interposition to protect against infractions, even though the defendants may strongly traverse its validity. — lb. 55. " It has been a matter of grave question whether the writ of injunction should ever be employed to compel a defendant to perform his contract, and there is certainly no case in which such a writ has been awarded without exacting as preliminary the full performance of equity by the complainant. To issue it while there is a substantial controversy as to the equities of the parties, and upon a simple motion which does I not permit those equities to be inquired of and defined, according to the approved usages of chancery, would be to go further than . . it has ever been contended that a chancellor ought to go." Smith V. Cummings et al., 1 Fish. P. C. 152.— Kane, 1853. 56. An exclusive possession for eight years presumptively asserts the validity of a patent for the purpose of a provisional injunction. Foster V. Moore, 1 Curtis's C. C. 279. — CtrKTis, 1853. 57. " It is not possible to fix any precise terms of years during which the exclusive possessor must bring suit. The reason of the presumption in favor of the validity of the grant is the ac- quiescence of the public in the exclusive right of the patent, which it may be reasonable to as- sume, would not exist unless the right was wholly valid, and it is obvious that this public acquiescence is entitled to more or less weight, according to the degree of utility of the machine, and the number of persons whose trade or busi- ness is more or less affected by it." — lb. 58. A considerable exclusive possession under a patent, is, of itself, a proper basis for the issue of provisional injunction. Goodyear et al. v. Gentral Railroads of New Jersey, 2 Wall., Jr., 356.— Griek, 1853. 59. " Where a question of infringement is one that admits of doubt, or where' the facts are in dispute, the court will not decide it summarily on the motion for a preliminary or interlocutory injunction. ' ' Where defendant is amply able to respond in damages, an injunction is not neces- sary on the ground of irreparable injury to the complainants likely to occur before final decree. But where the facts are admitted, and the action of the court depends upon the construction of the patent, the matter is as fully before the court as it can be on final hearing and will be disposed ot— lb. 60. For an exnmple of a case where the court found the complainants technically entitled to provisional injunction, but withheld it, because to issue it -would stop the running of defendant's railway cars, and because the court deemed the INJUNCTION— PROVISIONAL. 363 question of the settlement of the right the more important thing, see — . lb. 61. Although assignees and licensees may in some cases be necessary parties to an account- ing, the same parties need not always be neces- sarily joined in a motion for a provisional in- junction. — lb. 63. Where, by granting an injunction, there would be a greater probability of producing ir- remediable mischief than there would be of pre- venting it, neither an absolute nor conditional in- junction ought to be granted. Day v. Candea et ,d., 3 Pish. P. C. 9.— Ingersoll, 1853. 63. In case of doubt provisional injunction will be refused. Byam et al. v. Eddy, 2 Blatch. 531. — Prentiss, 1853. 64. As a rule, upon a motion for a provisional injunction, the complainant is not entitled to file affidavits in the nature of rebuttal. Bay v. Bos- ton Belting Co., 16 Law Rep. 339. — Spragtje, 1858. 65. If there exist any reasonable doubt about the novelty of the patented thing, or about the substantial identity of the defendants' device therewith, provisional injunction cannot issue. Winans v. Eaton et al., 1 Fish. P. C. 181.— Nelson, 1854. 66. Although a patent may have been sus- tained in a prior adjudicated case, yet if on a subsequent motion for a provisional injunction in another case, new and strong evidence im- pugning the novelty of the patented thing is in- troduced and is not overcome, a provisional in- junction will be refused. —Ji. 67. Where defendants were bona fide pur- chasers of the article complained of, without notice of plaintiff's claim to it, a provisional in- junction was refused, and a five thousand-dollar bond ordered in lieu thereof. United States Annunciator Co. v. Sanderson et al., 3 Blatch. 184.— Bettb, 1854. 68. It is " not necessary for the defendant to give to the plaintiff previous notice of its defence. It Is entitled to make it by answer or depositions when the motion for injunction is brought on. But then, on its part, the defence must be com- plete and final as to the interlocutory proceed- ing." Day V. New England Car Spring Co., 3 Blatch. 154.— Betts, 1854. 69. At a hearing of a motion for provisional injunction, after respondent had read its affi- davits, complainant proposed to read rebuttal affidavits. Respondent objected thereto and the court held that, under Rule 107 of the Southern District of New York, complainant might do this and respondent was not entitled to offer an- swering afiidavits. — lb. 70. While, " strictly speaking, there can be no possession of the exclusive right before the date of the patent, because the patent grants that right," yet such possession, coupled with ex- clusive possession subsequent to the patent, strengthens the latter and aids the granting of provisional injunction. Sargent et al. v. Sea- grave, 2 Curtis's C. C. 553.— Curtis, 1855. 71. " An unsuccessful attempt to interrupt a possession strengthens the presumption which arises from it. It tends to show that persons for a time have refused to submit to it, but on inquiry have submitted. Such submission is the most persuasive kind of acquiescence." — lb. 72. " Of several persons who have a right to contest a title, one may have a better defence on an application for a preliminary injunction than another. The court looks to the peculiar circumstances, to see what degree of inconven- ience would be occasioned to one party or the other, by granting or withholding the injunc- tion, and whether the d'ef endant has voluntarily placed himself in the position to be subject to that inconvenience." — lb. 73. On a motion for provisional injunction the court will not look into a case further than to ascertain whether or not a case has been made which, upon established principles of equity, to prevent irreparable injury, requires the court to interfere pending litigation. Sickles et al. v. Youngs etal, 3 Blatch. 393.— Nelson, 1855. 74. A mere denial of complainant's title will not prevent the issue of a provisional injunction. Clum" V. Brewer etal., 3 Curtis's C. C. 506. — Curtis, 1855. 75. "A mere denial, by the answer, of the equity of the bill, does not prevent the court from looking into the law of the facts of the case where a special injunction is moved for, and granting or refusing it according to its discre- tion. And where the title to the injunction de- pends upon an interpretation of doubtful facts," the court will " so interpret on such motion, and grant or refuse it according to the result of that interpretation. ' ' — lb. 76. The exclusive possession of the market by the complainants of such a patented machine as an apple-parer, and the sale of upward of eighty thousand of such machines, makes in complain- ants' favor on a motion for provisional injunc- tion. Sargent et al. v. Carter, 11 Mo. Law Rep. 651.— Curtis, 1857. 77. Although the patented device in question may be a steam-engine cut-off, and used by de- fendant upon a steamboat, when defendant re- fuses to make just compensation, the ' ' considera- tion of either public or private convenience 3G4 INJUNCTION— PROVISION^AL. should have little weight" to prevent the issuing of a provisional injunction. Sickles v. I'ileson, 4 Blatch. 109.— Ingbrsoll, 1857. 78. Where a patent has not been established in a trial at law or in equity, nor the exclusive rights of the patent owner acquiesced in by the public, iu order to authorize the issuing of a preliminary injunction the right of the patent owner must be clear and free from doubt and the infringement equally clear. North et al. v. Kershaw et al., 4 Blatch. 70. — Ingersoll, 1857. 79. "There is no necessity that the validity of a patent should be established in a trial at law before an injunction can be granted." Sickles V. Mitchell, 3 Blatch. 548. — Ingersoll, 1857. 80. "It is too much for a defendant, in a clear case, to insist upon having the privilege of using a patented invention, for the reason that he is able to paj the damages which may be awarded against him at the end of a protracted litigation to ascertain their amount." — lb. 81. Where a defendant has been using com- plainants' invention with complainants' knowl- edge for quite a period of time, the only ques. tion open being that of compensation, a provi- sional injunction will not be granted. Smith et al. v. Sharps Rifle M'fg Co., 3 Blatch. 545. — Ingersoll, 1857. 83. Complainants' basis for asking for a pro- visional injunction was " the issuing of patents, the quiet enjoyment under them for a consid- erable time, several judgments at law as well as decrees in equity, in which parties have been already enjoined, and the affidavits of several persons qualitied to know, who testify that the invention was new." The alleged anticipatory devices set up by defendant were held not suffi- cient by the court, and the injunction was granted. Potter et al. v. Holland, 4 Blatch. 238. — Ingersoll, 1858. 83. In an action at law between the parties, plaintiffs' patent had been sustained. Plaintiffs then applied for a provisional injunction. The patented thing was an improvement in looms which defendant had running on a large num- ber of looms. Injunction denied and account ordered. Furlmsh et al. v. Bredford, 11 Mo. L. R. 471. - Curtis, 1858. 84. " In acting on applications for temporary injunctions to restrain the infringement of let- ters-patent, there is much latitude for discretion. The application may be granted or refused un- conditionally, or terms may be imposed on either of the parties as conditions of making or refus- ing the order. And the state of the litigation, where the plaintiffs' title is denied, the nature of the improvement, the character and extent of the infringement complained of, and the com- parative inconvenience which will be occasioned to the respective parties, by allowing or denying the motion, must all be considered in determin- ing whether it should be allowed or refused, and if at all, whether absolutely or upon some and what conditions." — lb. 85. " The writ of injunction is a remedial writ, in the nature of a prohibition." "It is not necessary before a writ, to prevent a wrong issue, that the wrong should have been actually com- mitted. If it was, the remedy by injunction would be a very inadequate one." Poppenhu- sen V. New- York Outta Percha Comb Co., 4 Blatch. 184. — Ingersoll, 1858. 86. " When the rights of a party under a pat- ent have been clearly and distinctly established, and an infringement of such rights is threatened ; or, when they have been infringed, and the party has good reason to believe that they will continue to be infringed, an injunction will is- sue. It issues for the reason that there is good ground to believe that in future they will be in- fringed. And when a trial at law has been had, resulting in a verdict in favor of the patentee, in which the right to the improvement patented has been fully established to the satisfaction of the court, and the infringement of right made clear, such trial, resulting in such a verdict, is sufficient, without any other proof, to authorize the court to grant an injunction to ijrevent any future violation of right. Such trial, with such a result, affords sufficient proof that in future there will be an infringement, unless such in- fringement is restrained by injunction. ' It Is, inider such circumstances, almost a matter of course that the injunction shall be allowed. '" —lb. 87. Where defendants had a patent, and claimed to be manufacturing under it, and there was no allegation of insolvency, and a recovery in damages would remunerate the complainants, motion for provisional injunction was refused, but defendants were ordered to keep an account of their manufacture and sale. Goodyear et al. V.Dunbar et al, 8 Wall., Jr., 283.-Gbikb, 1859. 88. " The remedy by injunction, though nec- essary in certain cases, to do complete justice, is, nevertheless, one which should always be cau- tiously granted, and more especially where it is demanded before a decree of the court, or final hearing on the merits. If defendants show a belief that they have a just defence, and are not wilful pirates of the plaintiflfs' invention, it should be a case of evident mistake of law or fact, or both, in the defence which they set up INJUNCTION— PEO VISIONAL. 365 which will justify the court in using their /e« B went into interference in the Patent Office with A, and took a patent for the same invention of later date. B then threatened A's customers with suit. A then sought to have B enjoined from bringing said suit until the termination of an interference upon the same matter between A and B in court. Injunction refused. Asbestos Felting Oo. v. U. 8. & Foreign Salamander Felt- ing Co., 13 Blatch. 453. — Blatohfokd, 1876. 37. Doubted, that any case be found sustain- ing an action in the nature of an interference by a junior private patentee, who alleges that his patent does not conflict with a prior patent, and who asks the court to so adjudge. " It is, in substance, a suit to limit the effect of a patent, to declare that it does not extend to a certain class of cases, and, pro tanto, to have it adjudged to be void and of no force. Such an action can only be sustained by the Attorney-General, in the name and on behalf of the United States." Celluloid M'f'g Oo. v. Goodyear Dental Vulcan- ite Co., 13 Blatch. 375.— Hunt, 1876. 38. An averment in complainant's bill that the defendant claims an interference and that the complainant denies it, cannot authorize the com- plainant to ask a settlement as of an interfer- ence. — lb. 39. In case of interfering patents, the remedy is not by scire facias at the instance of the re- lator, as in England, but the statute provides for a suit in equity brought by the owner or other person interested in the working of the inven- tion, against the owner of the interfering pat- ent." Attorney- General v. Bumford Cliemieal Works et al., 3 Bann. & Ard. 298. — Sheplet, 1876. 40. " By the act of 1836 it was not Intended to confer upon an interfering patentee the right to try ... a question by a suit in his own name, which would be conclusive only inter partes, and leave the same question open . . to innumerable vexatious suits to set aside the patent, since a decree in favor of the patentee in one suit would be no bar to a suit by another party." — li. 41. An interference case in court " having been presented by a ' bill in equity, ' and notice given as prescribed, the ' due proceedings ' to follow must be such as pertain to equity causes. ' ' And " all the proceedings had before the Patent Office should be received together with such other testimony as may be taken in the progress of this suit. " Furthermore " the court will re- ceive all the proceedings had before the Patent Office, and when an appeal lies to the Supreme Court of the District of Columbia, all the pro- ceedings had before that court, together with all ■new and additional testimony taken in the equity proceedings." Squire, John J. , in re, d Bann. & Ard. 133. -Treat, 1877. 42. "An application for a reissue to cover a feature not claimed, but disclosed in the original application, cannot be put in interference with a subsequent application." Plaits & Walden, ex parte, 15 O, G. 827. — Cartter, 1879. _ 48. ' ' The statute confines interference to cases where an applicant claims that fo"r which a pat- ent has been granted, or that which is claimed or can be claimed in a previous application." —lb. ,44. Where the present litigants had previously been in interference in the Patent Office, the court INTEEFBEBNCE. 390 said : " If the only question in the case was the priority of the invention, as between the parties, I should not hesitate to grant the injunction forthwitli to the complainant. The decree of the Patent Office on the interference doubtless concludes the defendant, as he has not thought proper to appeal from the same, after submit- ting himself to the jurisdiction. " Greenwood v. Bracher, 1 Fed. Rep. 856. --Nixon, 1880. 43. Complainant having brought suit on its patent, defendant submitted the evidence and decision in a Patent Office interference awarding priority to defendant's patent. The court said : " While this decision is not conclusive here, it is nevertheless entitled to sufficient weight to cast the burden on the plaintiff. ' ' Wire Book Sewing Machine Co. v. Stemnson, 11 Fed. Rep. 155. — BUTLBR, 1883. 46. Where the defeated party in a Patent OiBce interference carries the interference into court, " it would be highly improper to enjoin the successful applicant from receiving his pat- ent upon the mere suggestion that the Commis- sioner was mistaken. ' ' Whipple v. Miner et al. , 15 Fed. Rep. 117.— Lowell, 1883. 47. By the court : " The decision of the Pat- ent Office upon an interference proceeding is sufficient to entitle the successful party as against the defeated party or his trustees, to a prelim- inary injunction upon the question of priority of invention raised in the subsequent suit." Smith V. Ealkyard etal., 23 0. G. 1833.— Colt, 1883. 48. By the court : " While the defeated party to an interference is not estopped in another ac- tion from raising the question of want of novelty ia the invention, yet if he had knowledge of the condition of the art at the time of his appli- cation, which the testimony here discloses, a want of novelty in the invention must be clearly apparent or a preliminary injunction will be granted. ... In such a case it has been held that where there is a want of good faith the court will grant injunction. ' ' — lb. 49. " It is well settled that the decisions of the Commissioner of Patents, though entitled to great weight on questions of priority, are not final, even between those who have been fully heard in the interference. " Oloucester Isinglass & Qlue Co. V. Brooks etaZ., 19 Fed. Rep. 426. —Nelson, 1884. 50. Where complainant has prevailed over de- fendants in an interference in the Patent Office, the interference proceedings determine as be- tween these parties, first, that the complainant was the prior inventor ; and, second, that the subject-matter of the patent was not void for want of patentable novelty, so that the com- plainant would be entitled, if there were no otlier considerations, to a provisional injunction, tliere being no dispute as to the infringement. But it is open to the defendants to insist that the patent is void for want of patentable novelty, on references not presented to the Patent Office, and for other reasons. Swift v. Jenks et al., 19 Fed. Rep. 641.— Coxb, 1884. 51. Where a suit is brought by a patentee for the annulment of an interfering patent, it is not pertinent for the defendant to attempt to show the invalidity of complainant's patent, and a plea to that effect will be overruled. Pentlarge V. Pentlarge, 23 Blatch. 10.— Benedict, 1884. 53. It seems that the question whether two patents interfere with each other may be prop- erly raised by demurrer to the bill. Morris v. Kempshall M'fg Co., 30 Fed. Rep. 121.— Ship- man, 1884. 53. Although the language of the claim of one patent maybe broad enough to cover and in- clude the device described in another patent, that fact does not suffice to make the two patents in- terfering patents under Section 4918 of the Re- vised Statutes. — lb. 54. "The sole question that can be litigated under Section 4918 is the question of priority be- tween two interfering patents." The question whether either or both patents are void for lack of patentable novelty cannot be brought into an interference. LockwoodY. Cleveland et al., 20 Fed. Rep. 164.— Nixon, 1884. 55. Two patents do not interfere under Sec- tion 4918, unless they claim the same thing. The practice of the invention described in de- fendants' patent may infringe complainant's pat- ent, but that is not necessarily a pertinent fact. Pentlarge v. Jff. T. Bung & Bushing Go. et al., 30 Fed. Rep. 314.— Wheeler, 1884; also 38 O. G. 370. 56. One Butler was in the Patent Office with an application for a patent on milk-setting ap- paratus. He was put in interference with one Shaw on a claim or issue stated by the Patent Office. Subsequently the Commissioner rejected another claim made by Shaw, such rejection be- ing based upon the result of said interference proceedings. Butler brought his application to the court under Section 4915 of the Revised Statutes at large. The point was made that he ought to have taken his appeal, on the claim last referred to, to the Supreme Court of the District of Columbia. The court held that the action was properly brought. Butler et al. v. Shaw, 31 Fed. Rep. 331.— Gkat, 1884. 57. The losing party to an interference in the 400 INVENTION— INSUFFICIENCY OF. Patent Office being a prior patentee, may bring on tbe interference anew in a United States Cir- cuit Court under Section 4918 of tlie Eevised Statutes. Hubel v. Tucker et al., 23 Blatch. 297.— Wallace, 1885. 58. Privies to an interference proceeding " are bound by the judgment to the same extent as parties to the record. The decision upon an in- terference is not conclusive in suits upon the patent granted in pursuance of it." Celluloid M'fg Go. et al. v. OhrolUMon Oollar c6 Guff Go. et al., 32 0. G. 383.— "Wheeler. 1885. 59. A Patent Office adjudication in an inter- ferepce proceeding " is a sufficient adjudication upon the patentability of the invention, and the right of the successful party to a patent for it, to lay the foundation for a preliminary injunc- tion against the losing parties and privies to pre- vent infringement of the patent, and neither al- leged anticipation of tlie invention by others, known to them while they were seeking to ob- tain a patent for it themselves, nor their own will avail them to prevent the injunction with- out being made clearly to appear." — Ih. 60. It seems that in an equity suit for infringe- ment, where defendants own and set up an in- terfering patent, the complainant's patent may be declared void by the court, and the com- plainant enjoined from bringing or threatening further suits under it. Sawyer v. Massey et al. , 25 Fed. Rep. 144.— Spear, 1885. 61. Under Section 4915 of the Revised Stat- utes, where there is an opposing party, it is not needful to make the Commissioner of Patents a party. Graham v. Teter, 38 O. G. 758.— Sead- LET, 1885. 63. In a proceeding under Section 4915 of the Revised Statutes, where the inventor has as- signed an interest, the assignee should be joined with him. — Ih. 68. Two parties, A and B, were in interference in the Patent Office ; A prevailed and took pat- ent. Thereupon A's assignee brought suit against B's assignee, and complainant contended that by virtue of this action of .the Patent Office complainant was entitled to preliminary injunc- tion. Thereof the court said : " While acquies- cence in the decision of the Patent Office in an interference case might raise a presumption of the validity of the patent, and prima facie enti- tle the complainant to protection by injunction, it is far from res adjudicata. No court is bound by the decision of tlie Patent Office granting a patent, when immediate steps are taken to test its validity in an action instituted for that pur- pose ; and in an interference case, when the issue is decided, the rights of the defeated party are not prejudiced if he avails himself of the law which virtually transfers the controversy to the courts. . . . The patent held by complain- ant, and the decision of the Patent Office in the interference, do not make out a case for an in- junction, unless ^iix>rima facie right is forfeited by a judicial decree or judgment or acquies- cence, neither of which exist. " Provisional in- junction was refused. Minneapolis Harvester Works V. MeCormick Harvesting Machine Go., 38 Fed, Rep. 565.— Nelson, 1886. 64. Where A brings suit against B claiming priority of right of patent to A over that to B, B may file a cross-bill claiming priority of right for his patent, and asking that the patent of A be declared void, although the court has the power to do that without such a cross-bill. Am. Glay-Bird Go. v. Ligowski G lay Pigeon Co., 31 Fed. Rep. 466. -Sage, 1887. 65. " The court is limited, in causes brought under Section 4918, to the question of priority between the interfering patents." — Ih. 66. The grant of a patent after victory in an interference does not establish the validity of the patent for the purpose of a provisional in- junction against a person who was not a party to the interference. Edward Barr Go. v. New York & New Haven Automatic Sprinkler Co., 33 Fed. Rep. 79.— Lacombb, 1887. 67. A victory in a Patent Office interference is prima facie sufficient to entitle the victor to have the patent of his opponent annulled. Ohic- opee Folding Box Go. v. Sogers, 33 Fed. Rep. 695. —Wallace, 1887. INVENTION— INSUFFICIENCY OF. "Invention — Insufficiency of " in the Pat- ent Acts. Act approved February 31st, 1793 Section 2. . . . Simply changing the form or the proportions of any machine, or composition of matter in any degree, shall not be deemed a discovery. [Repealed Jply 4th, 1886.] Cases. 1. The prior machine need not have been in " every respect similar," for a mere change of form or proportions will not support a patent. Woodcock V. Parker et al., 1 Gall. 437. — Story, 1813. 3. "If new effects are produced by an old machine in its unaltered state, ... no patent can be legally supported." Whittemore et al. V. Gutter, 1 Gall. 478.— Story, 1818. 3. " The patent must be for a specific ma- INVENTION— INSUFFICIENCY OF. 401 chine, substantially new in ita structure and mode of operation, and not merely changed in form, or in the proportion of its parts. " Lowell V. Lewis, 1 Mason, 182. — Story, 1817. 4. Increasing the number of arms in a reel does not amouat to invention. Barrett et al. v. Ilallet al., 1 Mason, 447.— Story, 1818. 5. Changes in form or proportion only do not amount to invention. Dixon v. Moyer, 4 Wash. 68.— Wash. 1831. 6. Folding thread into skeins, enclosing it in a sealed wrapper, and labelling the wrapper, does not constitute a useful invention within the meaning of the patent law. Langdon v. Be Qroot et al., 1 Paine, 303.— Livingston, 1833. 7. Improvement in form or proportions made by a mechanic in constructing an invention may be adopted without invalidating the patent. [Said with reference to a suggestion of two rows of rivets by mechanic against the one row of the inventor.] Pennock et al. v. Dialogue, 4 Wash. 438.— Wash. 1835. 8. Improvements and alterations in form and proportions, but not of essential parts and princi- ples, made by a person employed to embody an invention, are the property of the inventor, as a part of his invention. Watson v. Bladen, 4 Wash. 580.— Wash. 1826. 9. The application of an old thing to a new, without other invention, is not patentable. Grinding peas for the first time in a coffee-mill, or carding wool for the fir.st time -on a cotton- card, is not patentable. Ames v. Howard et al., 1 Sumner, 482.— Story, 1833. 10. " Mere formal differences cannot be pro- tected by a patent. . . The difference must be substantial ; and if they" [the jury] " shall find that a stove was in use prior to tlie plaintiff 's in- vention, substantially lilie his, he can claim no exclusive right." Stanley v. Whipple, 3 Mc- Lean, 85.— McLean, 1839. 11. Packing blocks of ice edgewise is not a patentable invention. Kemper's Application, 1 MacArthur's P. C. 1.— Cbanoh, 1841. 13. Where a certain process of curing has been applied to hair used for mattresses and the like, it is not patentable to apply that same proc- ess to the curing of palm-leaf. Howe v. Abbott, 3 Story, 190.— Story, 1842. 13. " Mere colorable or slight alteration of machine, or a change in its proportions, gives no ground for a patent, nor can it shelter an individual from the consequences of an infringe- ment. In such cases the inquiry is always whether the principle of the two machines is the same. If the principle on which the machinery works is the same, and the effect is similar in both, in contemplation of law the machines are identical. A change in the position of the oper- ating powers, or in the thing on which the effect is produced, is of no importance. Such a modi- fication does not arise to the dignity of invention. There must be an essential difference in the ap- plication of the mechanical power to make the ' machines dissimilar. ' ' Brooks et al. v. Biekndl et al., 3 McLean, 350.— McLean, 1843. 14. "A machine, or apparatus, or other me- chanical contrivance, in order to give the party a claim to a patent therefor, must, in itself, be substantially new. If it is old and well known, and .applied only to a new purpose, that does not make it patentable. A coffee-mill applied for the first time to grind oats, or corn, or mus- tard would not give a title to a patent for the machine. A cotton-gin applied without altera- tion to clean hemp would not give a title to a patent for the gin as new. A loom to weave cotton yarn would not, if unaltered, become a patentable machine, as a new invention, by first applying it to weave woollen yarn. A steam- engine, if ordinarily applied to turn a grist-mill, would not entitle a party to a patent to it, if it were first applied by him to turn the main wheel of a cotton factory. In short, the machine must be new, not merely the purpose to which it is applied. A purpose is not patentable, but the machinery only, if new, by which it is to be ac- complished. In other words, the thing itself which is patented must be new, and not the mere application of it to a new purpose or object." Bean y, Smallwood, 3 Story, 408. — Stoky, 1843. 15. If a construction is old in common car- riages, it is not patentable simply to employ it in railway carriages. Winans v. Boston & Provi- dence R. B. Co., 3 Story, 413.— Story, 1843. 16. "The substitution of a well-known me- chanical equivalent is not an invention within the patent laws." Cochrane v. Waterman, 1 MacArthur's P. C. 53.— Cranoh, 1844. 17. " The endless screw and wheel is a com ■ mon mechanical power applicable to an in- definite number of machines, and the mere ap- plication of it to a machine, to which it had never before been applied, would not be an invention, although it might make the machine better than it would have been without it." " The appli- cation of it to the steering of a vessel seems to be no more entitled to a patent than if it had been applied to a kitchen-jack for washing. It seems to be an ordinary power applied to an ordinary purpose, and that the application of it is not invention within the meaning of the pat- ent law." — lb. 18. A change in the number of knives at- 402 INVENTION— INSUFFICIENCY OF. tached to a cylinder, or tlie attachment of the same on the cylinder by screws instead of by rivets at the end, "hardly seems a sufficient change in form or principle, or results, ... to justify a patent." Hovey v. Stevens, 1 W. & M. 290.— WooDBUKY, 1846 19. Change of form is not substantial change, unless a new and useful result is produced. Gibson v. Harris, 1 Blatch. 167. — Nelson, 1846. 20. A patented improvement consisted mainly In making knobs for doors and the like of pot- ters' clay or porcelain, being otherwise like knobs of the previous art. The court thereof said : " To give an exclusive right there must be what is called a new principle invented. Not a mere principle in an abstract sense, for none such is likely to be discovered, but a new com- bination or mode, for instance, of attaching the spindle to the knob." "The cheapness and quality of the article are relied upon as giving, or contributing to give the complainants exclu- sive right. But these afford no ground what- ever for a patent." " An article made accord- ing to a known method may be better than other articles made in the same manner, on ac- count of its superior mechanism. But that is no foundation of an exclusive right. And if a material not before used in the same structure be used, that gives no claim to a patent though the article be more valuable than any other of its kind." Jury found for the defendants. Hotchkiss V. Greenwood et al., 4 McLean, 456. — McLban, 1848. 21. "Change of form is not material, when the form does not contribute toward the new result. ' ' Adams et al. v. Edwards et al. , 1 Fish. P. C. 1.— WOODBUBT, 1848. 23. Mere differences of form generally amount to nothing. Many v. Jogger et al., 1 Blatch. 372.— Nelson, 1848. 23. "A formal difference between the com- bination of B . . . and any previous combina- tion, is not patentable, and involves no skill, in- genuity, or mind. It is simply a difference in mechanical construction. In order to be pat- entable the change must be substantial, as con- tradistinguished from formal. The new article must be different from the article on which it is claimed to be an improvement, not only in its mechanical contrivance and construction, but in its practical operation and effect in producing the useful result. Then it is not formal. Theh it requires mind, Ingenuity, labor, time, and ex- pense." Buck etal. v. Hermance, 1 Blatch. 398. -Nelson, 1849. 24. Mere difference in form or size is not a difference in principle. Foote v. Silsby et al., 1 Blatch. 445.— Nblbon, 1849. 25. There is nothing substantially new in the mere duplication of parts. Wilbur v. Beecher, 2 Blatch. 133.— Nelson, 1850. 26. "A difference merely in shape is a differ- once in degree only, and not in the thing itself." —lb. 27. The improvement of the patent in suit, as stated in the claim, was : " What we claim as our invention, and desire to secure by letters- patent, is the manufacturing of knobs, as stated in the foregoing specification, of potters' clay, or any kind of clay used in pottery, and shaped and finished by moulding, turning, burning, and glazing, and also of porcelain. " The knob was not new, nor were the metallic shank and spindle, nor the dove-tall form of the cavity in the knob, nor the means by which the metallic shank was fastened therein. The only new thing was the substitution of a knob of a different material from that before used in the same connection. The court held the patent invalid, saying : " The difference is formal, and destitute of in- genuity or invention, and it may afford evidence of judgment and skill in the selection and adapta- tion of the materials in the manufacture of the instrument for the purpose intended, but noth- ing more. " Hotchkiss et al. v. Oreenwood et al. , 11 Howard, 248.— Sup. Ct. 1850. 28. A person may be the iuventor of a device, and not be entitled to a patent therefor, because he is not the original and first inventor. His ignorance of prior structures is an immaterial fact. Larabeey. Courtlanetal., Taney's Dec. 180.— Taney, 1851. 29. Plaintiff's Invention consisted in the com- bination of a jet-bath with a movable reservoir. The combination of a fixed reservoir and bath was old. The court said. " A movable reser- voir, and supplying the jet with water from the reservoir, is substantially the same with that by which the jet-bath and reservoir were united to- gether in the old improvement, or if a mechan- ic of ordinary skill, and acquainted- with such business, with the old improvement before him, could have attached the jet-bath to the movable reservoir in a manner that would have produced the same result with that adopted by the plain- tiff, then the improvement he claims to have in- vented is not patentable, and his patent is in- valid," and the jury found a verdict for defend- ants. — lb. 30. Making paint from the refuse, insoluble matter that remains after the extraction of the soluble parts in the manufacture of chromate of potash from chromic iron ore is not a patent- INVENTION— IISrSUFFICIENCY OF. 403 able Invention. Maule, W. P., in re, 1 MaoAr- thur's P. C. 271.— MoKSBLL, 1853. 31. A floating dock being old, to construct a floating dock in sections is not patentable. Woerson & Ricard, in re, 1 MacArthur's P. C. 406.— MoESBLi., 1855. 32. " In cases where the utility of the change, and the consequences resulting therefrom [in the case of a machine] are such as to show that the Inventive faculty has been exercised, though in point of fact the change was the result of acci- dent, the requisite test of a sufficient amount of invention may exist. But if, on the, other hand, the change consists merely in the employment of an obvious substitute, the discovery and ap- plication of which could not have involved the exercise of the inventive faculty in any consid- erable degree, the change will then be treated as merely an unsubstantial, colorable variation, or a double use, and, of course, not patentable." —Ih. 33. " The mere application ef an existing ma- chine or organization to a new use is not the subject-matter of a patent. If a party finding a machine calculated and intended for the ac- complishment of one purpose, discovers or con- ceives that it is able to accomplish another pur- pose, and that purpose can be accomplished by the organization which has before been pro- duced, he can have no patent for the application of his old machine to a new use." Conover v. Eoachetal., 4 Pish. P. C. 12.— Hall, 1857. 34. Making the base of a cartridge shell of steel and the top of brass is not patentable over a shell wholly of brass. Maynard, E. , in re, 1 MacArthur's P. C. 536.— Merrick, 1857. 35. Providing a portable steam-engine with a hollow bed-plate to which the other parts are at- tached, in order to avoid the injurious effects of expansion and contraction of the boiler where the parts are attached directly to the boiler, does not amount to patentable invention. Blandy et al, in re, 1 MacArthur's P. C. 552. — Moesbll, 1858. 36. " Where the principle of the alleged in- vention has been discovered and applied before, the application will be what is called a double use. In such cases, although there may be in the new application some degree of novelty, something may have been discovered or found out that was not known before, yet, unless the new occasion on which the new principle is ap- plied leads to some kind of new manufacture or to some new result, it will be but a double use. Again, if the same purpose has in other instances been accomplished by the same means substan- tially, the use of those means on a new occasion does not constitute a sufficiency of invention." —lb. 37. A construction, the use of which has been confined to a refrigerator, is not made patentable by extending it to an ice-box or a pork-house. Pike V. Potter, 3 Fish. P. C. 55.— Pitman, 1859. 38. If the principle of the patentee's improve- ment was thoroughly understood before his in- vention, a mere perfected carrying out of that principle, on the part of the patentee, does not amount to patentable invention. Judson v. C7o^e et al, 1 Bond, 327.— Le.vvitt, 1860. 39. " A mere use or application of a material or composition previously known is not a new invention." Matthews v. Skates et al., 1 Fish. P. C. 602.— Jones, 1860. 40. If a certain mode of operation be found in one kind of machine, it does not constitute pat- entable invention to impart that tame mode of operation to a different kind of machine and operate it automatically. Singer et al. v. Walmsley, 1 Fish. P. 0. 558.— Giles, 1860. 41. If it be proved that the patented inven- tion was communicated to the patentee by an- other originally, the patent is void. — lb. 42. The enlargement of the organization of a machine does not amount to patentable inven- tion. (This was said of a case where the parts of a sawitig machine for sawing shingles and the like were enlarged so as to make the ma- chine capable of sawing logs.) Pliillips v. Page, 34 Howard, 164.— Sup. Ct. 1860. 43. Changing, in a lantern, the arrangement of the thumb-pieces attached to the spring is but a change of form involving no invention ; it is simply the device of the mechanic. Sangster v. Miller et al., 5 Blatch. 343.— Nelson, 1865. 44. Complainant's patented improvement in cannon consisted in fastening upon the exterior of cast iron cannon, wrought iron bands, by both shrinking and screwing them on. The prior art showed a wrought iron gun with bands shrunk on with niches underneath to hold them in place. Another part of the prior art showed a cast iron gun with bands shrunk on. Com- plainant's patent was held void for want of pat- entable novelty. Treadioell v. Parrott, 5,Blatch. 369.— Nelson, 1866. 45. " The common uses of common materials are supposed to be known. If a man merely makes a machine out of iron that has been made out of wood, and the jury find that it is the same machine, producing the same result in the same way, that is no invention, because every- body knows that every constructor can make a machine out of iron instead of wood. ' ' Woodman V. Stimpson, 3 Pish. P. C. 98.— Lowell, 1866. 404 INVENTION"— INSUFFICIENCY OF. 46. The application of otlier than manual power to the operation of a machine previously worked by hand is not invention. — li. 47. "The mere question whether any me- chanic of ordinary skill could make the combi- nation, will not do as a general test of the nov- elty of a machine. If the machines are similar, if they produce similar results, and the question is whether it is a new combination, whether it is a new arrangement of machinery, then it is very important to know whether any construc- tor acquainted with one machine could, by his common knowledge and skill, make the other, and work out that result in a somewhat more perfect manner. It is an important test in that sense ; not a test whether an ordinary mechanic can make the combination if it is suggested, but Avhether he can make the combination without such suggestion ; whether he can make the change by means of his ordinary knowledge, as a means of determining the question whether there is any new machine at all. That is to sayj it is the ordinary knowledge and skill of the me- chanic. " — lb. 48. " Suppose . . . the man who invented gunpowder gets a patent for it. If it was nitro- glycerine perhaps it might not be useful, and so would not be the subject of a patent ; but sup- pose it was gunpowder. There is no question but that gunpowder is useful, and it is an in; vention. Suppose he had said . ' " I combine saltpetre, sulphur, and charcoal in a certain way and produce a somewhat startling result." ' It would be no answer to the novelty of that in- vention that any chemist could do it after he had been shown how. The question is. Did every cheniist have the knowledge as well as the skill ? Because, if not, there is invention, and it is a proper subject for a patent. ' ' — lb. 49. ■ ' A mere difference in form is not usually very important if the work is done in substan- tially the same way." — lb. 50. Simply an arrangement of a discharge pipe with a stop-cock upon a steam-boiler is not a patentable invention. Am. Wood-Paper Go. V. Heft et al., 3 Fish. P. C. 316.— Gkier, 1867. 51. "Simple contrivances, the offspring of simple, even involuntary thoughts, often pro- duce great and beneficial results, while complex and elaborate ones, the product of long and profound cogitation, not infrequently prove com- paratively wholly abortive. But it is obvious that there is a limit beyond which mere changes cannot and ought not to receive this protection. . . . The law never intende"d that it should cover a change like . . . merely turning a seat at a different angle, regardless of the means by which i t is to be accomplished. ' ' Kirby etal.r. Beards- ley et al., 5 Blatch. 438.— Shipman, 1867. 52. The locating of the rakers' seat upon a har- vester diagonally across the path of the machine is not a patentable invention. — lb. 53. Although a prior machine may have been designed or used for a different purpose from the patented machine, yet, if it be substantially the same, the patented machine is destitute of patentable novelty. Smft et al. v. Whisen et al., 2 Bond, 115.— Lbavitt, 1867. 54. Where the reach of a wagon has been curved so as to permit the forward wheels to pass partly under it, there is no invention in- volved in increasing the curve so as to permit the wheel to pass entirely under it. Flood v. Hicks, 2 Bissell, 169.— Drtjmmond, 1869. 55. Where the fifth wheel of a wagon has been made of wood no patentable invention is in- volved in making it of iron. — lb. 56. " To allow ... a person by a mere change in the stj ucture of a machine, such as would suggest itself to any mechanic, to acquire a monopoly for that change, and the shield and protection of the law, would be an abuse of the law itself." — lb. 57. A patented machine was for ornamenting leather ; it had one smooth roll and one figured roll ; the figured roll by itself was old ; and a machine having two rolls, neither of them fig- ured, was old ; the improvement was held not to be patentable. Stimpson v. Woodman, 10 Wall. 117.— StJP. Ct. 1869. 58. A construction which is old in an ice- cream freezer is not patentable in a paint can. Brown r. Sail et al., 6 Blatch. 401. — Blatch- FOKD, 1869. 59. " It is only under very special circum- stances that a claim for a seat on a ■ machine, upon which an attendant or operator can ride, should be sustained." Brown v. Selby etal., 2 Bissell, 457.— Drummond, 1871. 60. The claim in complainant's patent was : ' ' The arranging of the smutter or scourer and the suction separating fan, within or between the legs of the blast or air-trunk, in which the en- tire separation is made, and which passes over or around them for the purpose of economizing space and cheapening the construction of the machine, substantially as described." The court held the improvement destitute of patent- able invention, saying. "The idea here ex- pressed, which the patentee has embodied in his machine, and claims to secure as his own, is that, in a machine having a scourer and fan con- nected by an air-trunk, as described, economy of space and cheapness of construction would mVENTION— mSUPFICIBNCY OP. 405 be gained by placing the smutter or scourer be- tween the legs of the air-trunk, Instead of else- where. Certainly no invention was required to reach such a result. It would rather require invention ■ to find any reasonably convenient place to locate a fan and scourer so connected, other than the one chosen by the patentee. No advantage or change in the operation of the ma- chine is claimed for the arrangement, but simply economy of space and cheapness in the con- struction." Knox V. Murtka et al., 9 Blatch. 205.— Benedict, 1871. 61. The patent in suit was for detachable teeth in circular saws, and it was held that substan- tially the same improvement had been applied to tongue and groove cutters ; and the new use was so analogous as to be a double use. Tucker V. SpauMing, 13 Wall. 453;— Sup. Ct. 1871. 63. Intimated, that where an impervious bear- ing surface of vulcanized rubber was old in a horse collar, it was not patentable to afterward apply such a bearing surface to a, saddle pad. Am. Saddle Co. v. Hogg, 1 Holmes, 133. — Shep- LEY, 1872. 63. " The law . . . gives no monopoly to in- dustry, to wise judgment, or to mere mechanical skill in the use of known means, nor to the product of either, if it be not new. These are within the proper field of competition, and open to all. In general, they will, in that competi- tion, be justly appreciated, and will command their proper remuneration if usefully employed. It is invention of what is new, and not compara- tive superiority or greater excellence in what was before known, which the law protects as ex- clusive property ; and it is that alone which is secured by patent." Smith v. Elliot, 9 Blatch. 400.— WooDRUFP, 1872. 64. " There arc many changes which may be suggested by the judgment or taste of the manu- facturer, or by the particular uses to which the article produced is to be applied, which are not invention ; and many exhibitions of superior skill, in producing an article of greater excel- lence, which are not invention. Thus, if the fabric be already known and in use, change of color, change of mere material, change in its degree of fineness, or in fineness of parts thereof — if these changes involve nothing new in con- struction, in the relation of its parts, in the office or function of either part or of the whole — do not constitute invention, although, for many purposes, these may constitute the greater ex- cellence of the fabric." — lb. 65. " If the fabric be not new, the application of it to a new use is not invention, when noth- ing novel is required for its adaptation. " — lb. 66. Although the use of a certain device in the prior art was for the purpose of planing, yet its applicability to sawing may not be patentable. Tucker v. Spaulding, 13 Wall. 453. — Sur. Ct. 1872. 67. Complainant's package or case for putting up powders had distributing perforations cov- ered by wax or wafer. In view of ■ prior art, paper boxes, and prior sealing of bottles by wax and wafers, this improvement was held destitute of patentable novelty. Sawyer v. Bixby et al., 9 Blatch. 361.— WooDBUPF, 1872. 68. Applying to the main circuit of a tele- graph line, a device old in the local circuit, does not amount to invention. Dayet al. v. Bankers' <& Brokers' Telegraph Co., 9 Blatch. 345.— Blatchpord, 1872. 69. Enlarging the diameter and capacity of a telegraph sounder does not amount to invention. -lb. 70. The application of a, gauge which is old in other machines, to a pegging machine, does not constitute invention. Qallahue et al. v. Butterfield, 10 Blatch. 232.— Woodrtjpp, 1873. 71. Although a certain kind of truck was old under a railway ear having trucks at each end, it was held that to combine such a truck with a locomotive devoid of a truck at the rear, consti- tuted a patentable invpntion. Locomotive En- gine Safety Truck Co. v. Erie B. B. Co., 10 Blatch. 292.— Blatchpord, 1872. 73. Complainant's patented improvement was : " ' Preserving fish or other articles in a close chamber, by means of a freezing mixture having no contact with the atmosphere of the preserving-chamber, substantially as set forth. ' " In view of the ordinary ice-cream freezer this was held destitute of patentable novelty. Piperv. Moon et al., 10 Blatch. 364.— Blatchpord, 1872. 73. Enlarging a part of a lantern does not con- stitute invention. Bane et al. v. Chicago Iffg Co., 3 Bissell, 880.— Blodgbtt, 1873. 74. The inverting of certain features of a lan- tern does not constitute invention. Bane et al. V.' III. M'fg Co., 3Bif3sell, 374.— Blodgett, 1872. 75. " The mere change of the location of the parts of a mechanism, so long as no different or additional function is performed, does not make the mechanism patentable."— J5. 76. " The fact that an article is better and more useful in the trade is evidence of novelty, but if the superiority is attained by the appheation of known means in a known way to produce a known result, the novelty required by the pat- ent law is wanting." Smith v. Nichols, 1 Holmes, 173.— Lowell, 1873. 406 INVENTIOIf— INSUFFICIENCY OF. 77. A chemical compound being old for the purpose of a fertilizer, increasing the amount of acid therein for the purpose of increasing the degree of a known quality, and using the same as a bread-raising compound, does not amount to patentable invention, nor, in the same con- nection, does washing bones clean to make an article fit for food, amount to patentaMe inven- tion. Bumford Chemieal Works v. Lauer, 10 Blatch. 133.— BLATCmroRD, 1873. 78. The claim in a patent was : " ' As a new article of manufacture, an embossed collar or cuff, made of a fabric composed of paper and muslin, or an equivalent fabric. ' ' ' Thereof the court said : " As like embossing had been done on starched linen, the result of producing such embossing on smooth, white, polished or en- amelled surface representing that of starched linen, cannot be patented as an invention." Union Paper Collar Co. v. Yan Deusen et al., 10 Blatch. 109.— Blatchfokd, 1872. 79. The claim in a patent was : " ' As a new article of manufacture, an ornamented collar or cufE, made of a fabric composed of paper and muslin, or of an equivalent fabric, ornamented by printing, or otljerwise marking on the sur- face plain or colored devices.' " Thereof the court said : " Printing had been done before on a smooth, white, enamelled surface ; and, noth- ing being claimed as new in the appliance, ma- chinery, or process for producing the printing, and the surface imitating starched linen being provided, there was nothing of patentable nov- elty in the idea of printing upon such surface." —lb. 80. The claim in a patent was: "1. 'The turning over of a paper, or of a paper and cloth collar, by a defined line, whether pressed into the material by a die or printed instrument, or by bending it over the edge of a pattern or block of the proper curve or line, substantially as de- scribed. ' " Thereof the court said: "It is shown that, for many years before (Jray's in- vention, paper envelopes, and the tops and bot- toms of paper and card-board boxes, were pro- duced by shapers of steel pressed on the mate- rial so as to produce defined lines, whereby the material could be folded. It was also shown that, in 1856 and 1857, the collars of Walter Hunt, made of paper and cloth, were folded over a piece of metal, in a straight line — the same process spoken of in the first claim of Gray's issue, as bending the material ' over the edge of a pattern or block of the proper curve or line.'" " It was also shown that, prior to Gray's invention, linen collars were ironed on blocks, with a groove in the block, so that, as the iron passed into the groove, the collar re- ceived a defined line by which it was turned down. This evidence disposes of the first claim of the Gray reissue. " — lb. 81. A claim in a patent was : " ' Turning the part B of a paper, or a paper and cloth collar, " over, onto, or toward the part A, in a curved or angular line, instead of a straight line, substan- tially as and for the purpose described.' " Thereof the court said : "Itis . . . proved that, before Gray's invention, paper collars were fold- ed by laying upon the unfinished side a piece of tin having at one edge the required curve, and pressing upward, over such curve, a part of the collar, so as to mark the line of the curve, and crease the paper, preparatory to folding it over ; and that linen collars were turned over on a curved line before Gray's invention, with the prevention of wrinkling and the affording of space for the cravat. The second claim of Gray's reissue is therefore invalid." — lb. 82. The claim in a patent was : " ' A collar made of long fibre paper, substantially such as is above described. ' ' ' Paper collars being old, and long fibre paper being old, this improve- ment was held destitute of patentable novelty. —lb. 83. The claim in complainants' patent was : " ' A paint consisting of oxide of copper, with a suitable vehicle or medium, substantially as de- scribed. ' " The benefit derived from the oxide of copper was its poisonous effect against ver- min, an old and well-known effect ; held, not sustainable. Tarr et al. v. Webb, 10 Blatch. 96. —Benedict, 1872. 84. Changing the parts of a seaming machine so as to produce a wider and smoother seam than any of its predecessors, is a matter of me- chanical skill and not invention. Barry v. Crugenheim et al., 5 Fish. P. C. 453. — McKbn- NAN, 1873. 85. " The transfer of flanges from an iron hub to a wooden hub would not be patentable, un- less it required some ingenuity or contrivance to adapt it to use in its new position. ' ' Sar-oen v. Hall et al, 9 Blatch. 534.— Woodkufp, 1873. 86. " The mere appropriation of an old device to a new use is not patentable." — lb. 87. "A man cannot even have two patents for the same process, because for different pur- poses." McCombetal. v. Brodie, 1 Woods, 153. —Woods, 1872. 88. In a sand-washer, lowering the outlet of a vessel so as to make it command a greater depth does not amount to invention. Smith et al. v. m-aeer et al., 3 Pittsb. 397.— MoKbnnan, 1872. 89. Springing a piece of erasive rubber upon mVENTIOlSr— INSUFFICIENCY OF. 407 the end of a pencil does not amount to patentable invention. Of such device the court said : " Such an article cannot be the subject of a~pat- ent. The elastic and erasive properties of india- rubber were 'well known to all, and gave to that substance the name by which it is generally des- ignated ; and how to make a piece of rubber encompass and adhere to another article was well known to every person who has ever seen a rubber shoe." Ruiher-Tip Pencil Co. v. Horey et al., 9Blatch. 490.— Benedict, 1872. 90. An old article made upon a new machine U not a new manufacture in the sense of the pat- ent law. " It could not have been the intention of the statute that pins, matches, nails, and other old articles in common use, should be patented as new articles of manufacture, simply because they were fabricated by the use of new and im- proved machinery, unless the product itself was a new and improved product, and, as such, pos- .sessing novelty of its own, independent of the new devices, or processes, or arts by which it was produced." Draper v. Hudson, 1 Holmes, 208.— Shbpley, 1873. 91. Certain wooden slides for dining-tables be- ing old, it is but mechanical skill to make them " of metal. Garter v. Memnger, 11 Blatch. 34. — WooDRUPP, 1873. 92. "If screws had been used to bind parts of a wooden frame together, it would not be in- vention to put parts of an iron frame together with screws, when the mode of application was identical." — lb. 98. " Structural changes of form and propor- tions, although they improve the operation, with- out changing the mode of operation, and pro- duce a much better result, although one of the same kind, arc only different and better forms of embodying the same idea, and illustrate the difference between mechanical skill and inven- tive genius." Oreely, ex parte, 1 Holmes, 284.— Sheplbt, 1873. 94. "A machine is not patentable on the mere ground that it makes an already known article more perfectly than it has been, or can be, made withouta machine." Wooster v. Calhoun etal., 11 Blatch. 215.— WooDKUFF, 1873. 95. Although a prior inventor of a device may not see or know all its uses, yet no one can there- after patent that device when applied to some new use. Bicltardson v. Lockwood, 6 Fish. P. C. 454.— Lowell, 1873. 96. The placing side by side of lights that were old in the prior art for the purpose of a skylight or a vault-light, is but a double use. Lake v. Fitzgerald, 6 Fish. P. C. 420.— Emmons, 1878. 97. "Where a patented device is the same as a prior device, expept in a single feature, and that feature is old in other devices of the same gen- eral nature, the patent cannot be sustained. Til-' lotson V. Munson, 5 Bissell, 426. — Blodgbtt, 1873. 98. A wooden cabinet being old, and the works of a sewing machine being old, there is no pat- entable novelty in mounting the sewing machine works upon a cabinet, nor in providing a wooden box to cover the works from dust and the like. Ross V. Wolfni/eret al., 5 O. G. 117. — Blodgett, 1873. 99. Where, in corn- planters, the driver has ridden upon the machine, and the platform has been constructed in such a manner that its move- ment backward or forward raises or lowers the seeding apparatus, and the seat itself is not new, it cannot be contended that the proper location of the seat for effecting the same requires the exercise of inventive power. Brown v. Guild et al, 23 Wall. 181.— Bradley, 1874. 100. Cutting away the metallic butt of a gun so as to permit the introduction of the cartridge into the barrel is not patentable invention. Bor- den Fire Arms M'fO Co. v. Remington & Sons, 3 O. G. 688.— Woodruff, 1873. 101. " The use of one material instead of an- other in constructing a well-known machine is, in most cases, so obviously a matter of mere mechanical judgment, and not of invention, that it cannot be called invention, unless some new and useful result, an increase of efficiency, or a decided saving in operation is clearly attained." Hicks V. Kelsey, 18 Wall. 670.— Sdp. Ct. 1873. 102. The substitution of iron for wood in making a wagon reach is not patentable inven- tion. — lb. 103. Where illuminated openings are old in one kind of stove, there is not patentable inven- tion in applying them to another kind, of stove, Hailes et al. v. Van Warmer et al., 20 Wall. 353.— Sdp. Ct. 1873. 104. Paper pulp from one vegetabfe substance being old, paper pulp from another vegetable substance is not patentable. ■ Am.. Wood-Paper Co. V. Fiber Disintegrating Co.,, 23' Wall. 566. — Sup. Ct. 1874. 105. The application of a pontable soda-water fountain to the new purpose of a fire extin- guisher does not constitute patentable invention. Northwestern Fire Extinguisher Co. v. Philadel- phia Fire Extinguisher Co.,,. 1 Bann. & Ard. 177. — McKennan, 1874. 106. " Where an effect orresult has been be- fore produced, the mechanical agencies by which it is reproduced, if they are not in themselves new, are not the subjpefeol a patent." — /*.. 408 INVENTION— INSUFFICIENCY OP.' 107. Placing two or more letters upon each of a set of spelling blocks where they had been used in the same general way before, though unsys- tematically, is not patentable invention. Hill V. Houghton, 1 Bann. & Ard. 291.— Lowell, 1874. 108. A " shoe having the substance or mate- rial of the upper part . . . thickened up, is not a new article of manufacture, in view of tlie prior shoe having the substance or material of the sole so thickened up. It is a mere double use of the same invention. The fabric not be- ing new, the aijplication of it to make the upper part of a shoe is not invention, nothing novel being required to adapt it to make such upper part." Meyer et al. v. Pritchard, 13 Blatch. 101.— Blatchpokd, 1874. 109. A hair-net of small squares, sufficiently small to keep short hair from protruding, such small squares being formed of threads so small as to be entitled to be called fine threads, being old, it is not patentable invention to substitute for each alternate fine thread a coarse thread in both directions. Dalton v. Jennings, 13 Blatch. 96.— Blatchford, 1874. 110. " It would be absurd to say that making one end of a lead-pencil larger than the other would be patentable." Reckendorfer v. Faber, 12 Blatch. 68.— Woodruff, 1874. 111. The accidental making of an improve- ment, with utter inability on the part of the maker to make another, is not invention. Pel- ton et al. V. Waters, 1 Bann. & Ard. 599. — Em- mons, 1874. 113. "This is the history of the art in rela- tion to most of the important discoveries and in- ventions of the present day. The want, which the discovery or invention is to supply, is first felt, and the genius o" invention is aroused, and the thoughts and efforts of inventors are direct- ed in a particular channel. When one achieves success it not infrequently ajDpears that prior inventors have been travelling in the same path, and, in the light of his success, we look back with wonder at the omission of those who start- ed earlier in the race to take the last short step which separated them from the goal. But it is the last step in the race of discovery or inven- tion that counts, and he who first crosses the di- viding line between experiment and success wins the prize over those who, having started earlier in the race, are but a single step behind at the goal." PiUe V. Providence & Worcester R. R. Co., 1 Holmes, 445.— Sheplkt, 1874. 113. Complainant's improvement was for a " method of introducing the molten cast iron into the mould, through a series of holes, di- rectly upon the inner influxed surface of the cast steel tire, by which a perfect union and weld of the metals are produced. " Car- wheels made by first forming a rim of cast steel, and then heat- ing and placing it in a mould previously pre- pared for the purpose, and then pouring- molten cast iron into the mould, welding the steel and iron together, were old. It was held that com- plainant's method of locating the pouring holes was an improvement in the nature of mere me- chanical skill, and that it was a matter of com- mon knowledge that iron and steel might be suc- cessfully welded together without the use of :t flux, and that complainant had not made a pat- entable invention. Needlmm v. Washburn et al., 4 Cliff. 254.— Clifford, 1874. 114. Where a patented device is anticipated by a iDrior device, which is the same as the patented device except as to a certain screw which, had defendant used, he would have been an infring- er, the difference is immaterial and the patent is void. Spring et al. v. Packard, 1 Bann. & Ard. 531. — Lowell, 1874. 115. Barrel head linings bundled together by wiring do not constitute a patentable invention. EeedY. Reedetal., 12 Blatch. 366. — Wallace, 1874. 116. " The mere production of an article of bulk to one of smaller size, is not, in general, the subject of a patent as a new manufacture, unless the properties of the article are improved by the introduction of some new ingredients, or by the subtraction of one or more of the ingi-edients of the original article, by which the new product is improved autl made more useful." Milligan & Higgins Glue Co. v. XJpton, 4 Cliff. 237.— Clifford, 1874. 117. " Glue, comminuted, is more readily soluble than glue in flakes, but tlie admission affords no support to the theory that comminuted glue is patentable, as the fact that small parti- cles of soluble substances are more readily dis- solved in liquids than larger ones, is a mat- ter of common knowledge, and has been known for ages, whereof the memory of man runneth not to the contrary." — lb. 118. " New articles of commerce are not pat- entable as new manufactures, unless it appears, in the given case, that the production of the new article involved the exercise of invention or dis- covery beyond what was necessary to construct the apparatus for its manufacture or produc- tion." — lb. 119. " Nothing short of invention or discov- ery will support a patent for a manufacture any more than for an art, machine, or composition of matter. "—Ji. INVENTION— INSUFFICIENCY OP. 409 120. " The reduction of glue, as manufactured in flakes, to small particles, . . . does not in- volve the exercise of invention or discovery. ' ' — lb. 121. The claim of complainant's patent was : " For a collar having a paper surface, imitative of the textile face and fibre of a dressed linen collar, as set forth." Thereof the court said : " Collars and cuffs, made of paper, being old, and paper embossed in various forms, some of ■which were imitations of the surface of textile fabrics, being known, . . . there was ... no patentable novelty in the application of paper embossed in imitation of linen to the making of collars and cuffs. ' ' Union Paper Collar Co. v. Leland, 1 Holmes, 427. — Lowell, 1874. 122. Making by machinery an article hereto- fore made by hand is not patentable invention. King v. Werner, 12 Blatch. 270. — Blatchfokd, 1874. 123. Making cast-iron furnace legs hollow in order to make them lighter is not patentable in- vention. Baxter, in re, 1 MacArthur's P. C. 520.— Cakttbr, 1874. 124. "Where a textile fabric differs from prior textile fabrics only in greater tightness of the weaving, a firmer grasping of the elastic cords by the weft threads, and a greater beauty and value, no patentable invention has been made. Smith V. NiclioU, 21 Wall. 112.— Sup. Ct. 1874. 125. " A patentable invention is a mental re- sult. It must be new, and shown to be of practi- cal utility. Everything within the domain of the conception belongs to him who conceived it. The machine, process, or product, is but its ma- terial reflex and embodiment. A new idea may be ingrafted upon an old invention, be distinct from the conception which preceded it, and bo an improvement. In such case it is patentable. The prior patentee cannot use it without the consent of the improver, and the latter cannot use the original iuventionwithout the consent of the former. But a mere carrying forward, or a new or more extended application of the origi- nal thought, a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way, by substantially the same means, with better re- sults, is not such invention as will sustain a pat- ent. These rules apply alike, whether what preceded was covered by a patent or rested only in public knowledge and use. In neither case can there be an invasion of such domain and an appropriation of anything found there. In one case everything belongs to the prior patentee, in the other to the public at large." — lb. 136. " Articles of manufacture maybe new in the commercial sense when tliey are not new in the sense of the patent law. New articles of commerce are not patentable as new manufac- tui-es, unless it appears in the given case that the production of the new article involved the exer- cise of invention or discovery beyond what was necessary to construct the apparatus for its manufacture or production." Union Paper Collar Co. v. Van Beusen et al., 23 Wall. 530.— Sup. Ct. 1874. 127. " Nothing short of invention or discovery will support a patent for a manufacture any more than for an art, machine, or composition of matter." — lb. 128. Turning down a paper collar on a curved line, after a manner old as to colors and other fabrics, is not patentable invention. — lb. 129. An anchored balloon bearing upon itself, or holding in suspension, in any convenient man- ner, an advertisement for display before the pub- lic, is not a patentable invention. Gould, IT. W., in re, 1 MacArthur's P. C. 410. — Cakttbh, 1874. 130. The patent in suit was for an erasive pencil-head ; the court took this to be a claim to a piece of , rubber with a hole in it, and held it destitute of patentable novelty. Rubber- Tip Pencil Co. v. Howard, 20 Wall. 498.— Sup. Ct. 1874. 131. Where a composition is old for one pur- pose, its application to another use, as for pre- venting radiation of heat, is not patentable. U. S. & Foreign Salamander Felting Co. v. Haven, 3 Dillon, 131.— Treat, 1875. 132. Where the bottoms of spittoons had been weighted to prevent them from overturning, and where cuspidors had been made of papier- mache, there is no patentable invention in mak- ing a sheet-metal cuspidor with a like weight- ing of the bottom. IngeraoU v. Turner et al., 3 Bann. & Ard. 89.— Nixon, 1875. 133. " The mere substitution of one known material for another in a known combination is not the subject of letters patent, though such substituted material is a cheaper or better one for the purpose. ' ' Putnam v. Weatlierbee et al., 1 Holmes, 497.— Sheplet, 1875. 134. If a prior device effects the same result as the patented device, it is not a material fact that such was not the intent in the prior device. Tufts et al. v. Boston Mach. Co., 1 Holmes, 459. — Sheplet, 1875. 135. Applying to the preservation of fish and other articles a freezing process which was old for preserving corpses is not patentable. Brown et al. V. Piper, 91 U. S. 37.— Sup. Ct. 1875. 136. "It is no new invention to' use an old 410 INVENTION— INSUFFICIENCY OF. machine for a new purpose." Boberts v. Syer, 91 U. S. 150.— Sup. Ct. 1875. 137. Where a refrigerator of the prior art had both an ascending and descending current, an improvement ijrocured by the use of the ascend- ing rather than the descending does not amount to patentable invention. — lb. 138. It being old to preserve green corn by canning, it is not patentable invention to cut the corn from the cob and can it in the same way. Sewellv. Jonesetal, 91 U. S. 171.— Sup. Ct. 1875. 139. " It is the invention of what is new, and not the arrival at comparative superiority or greater excellence in that which was already known, which the law protects as exclusive property, and which is secured by patent." Putnam v. Terrington, 2 Bann. & Ard. 237. — Nixon, 1876. , 140. The patent in suit was for a cotton-press. In the prior press there was a nut revolving with the press-box and frame, but the screw-rod did not revolve, it being fixed in a cross-beam above, the ends of which were arranged to slide up and down in grooves of the side frame. In the press of the patent the nut was stationary, being fixed in the cross-beam above, while the screw re- volved with the press-box and frame, being fixed to the follower. The patented arrangement was held to be a mere reversal of operation of the parts of the prior device, and not to involve pat- entable invention. Wicks v. Stevens, 2 Woods, 310.— Bradley, 1876. 141. Making in iron a frame which had been before made in wood does not involve patent- able invention. Holbrook et al. v. Small, 2 Bann. & Ard. 396. -Lowell, 1876. 142. The claim in complainant's patent in suit was : " As a new article of manufacture, a covered corset clasp, the cloth of which forms a marginal flap or flaps along its length suitable for and adapted to being sowed upon the corset, substantially as described, and for use in the place of broken, injured, or worn-out clasps or cloth, as herein set forth." In the prior art corset clasps covered with material similar to that of the corset to which the clasps were to be applied had long been made with flaps by which they might be sewed to the rest of the corset, and as these were worn out they had to be re- placed by new ones. Complainant's improve- ment was held destitute of patentable novelty, the court saying : " The plaintiff's claim is merely to the making and selling a part of an old and known manufacture as a new way of trade, and it is not, in its nature, the subject of a patent." Seligman v. Bay et al., 14 Blatch. 72.— Johnson, 1876. 143. A structure that is old as a chair seat cannot be patented as a bed bottom. Wmen Wire Mattress Co. v. Whittlesey et al., 8 Bissell, 33.— Blodqett, 1876. 144. " The law requires more than a change of form, or juxtaposition of parts, or the ex- ternal arrangement of things, or of the order in which they are used, to give patentability." " A double use is not patentable, nor does its cheapness make it so. " Reckendorfer v. Faber, 93 U. S. 347.— Sup. Ct. 1876. 145. " An instrument or manufacture which is the result of mechanical skill merely is not patentable. Mechanical skill is one thing • in- vention is a different thing. Perfection of workmanship, however much it may increase the convenience, extend the use; or diminish the expense, is not patentable. The distinction between mechanical skill, with its conveniences and advantages, and inventive genius is recog- nized in all the cases. " — lb. 146. The patent in suit was for "ahead or hair net composed of a main set of meshes fabri- cated of coarse threads combined with an aux- iliary set or sets of meshes fabricated of fine thread, substantially as described." The court was of the opinion that if the netting thus pat- ented had been produced by the patentee for the first time, it would have been difBcult to find in it or in the process by which he made it any- thing deserving of the name of invention within the meaning of the patent law. Dalton v. Jen- nings, 93 U. S. 271.— Sup. Ct. 1876. 147. It being old to use a deflector on one side of a saw, there is no invention in using a deflec- tor on both sides of a saw. Dunbar et al. v. Myers etal., 94 U. S. 187.— Sup. Ct. 1876. 148. "Invention or discovery is the require- ment which constitutes the foundation of the right to obtain a patent, and it was decided by this court more than a quarter of a century ago that unless more ingenuity and skill were required in making or applying the said im- provement than are possessed by an ordinary mechanic acquainted with the business, there is an absence of that degree of skill and ingenuity which constitute the essential elements of every invention." — lb. 149. "A mere carrying forward of an orig- inal patented conception involving only a change of form, proportions, or degree, or the substitu- tion of equivalents doing the same thing as the original invention by substantially the same means, is not such an invention as will sustain a patent, even though the changes of this kind may produce better results." — lb. 150. The patented invention consisted " in the INVENTION— INSUFFICIENCY OF. 411 employment of a metal ring within a ring formed of artificial ivory or similar materials, for giving strength to the same, thereby produc- ing a new article of manufacture." The ivory was old. It was old to cover metallic rings with compositions such as lacquer, varnish, rubber, and enamel. It was old to use dies in the man- ufacture of pipes or rings upon iron cores. The patented improvement was held destitute of pat- entable novelty. Rubber Coated Harness Trim- ming Co. et al. V. Welling, 97 U. S. 7. — Sup. Ct. 1877. 151. The patent was for a pavement composed of tiers or rows of wedge-shaped blocks driven into a foundation of sand or earth, thereby compacting the earth, and the spaces between the rows were then filled with gravel. The court was strongly of the opinion that a prior pavement made of cobble-stones, with their sharp, or pointed, or smaller ends set downward, and the whole rammed or driven into the sand or gravel on which it was laid, substantially antic- ipated the patent. Stow v. City of Chicago, 8 Bissell, 47.— Blodgett, 1877. 153. A patent for improvement in a pavement was for a method of spacing distances between .the blocks by the use of a removable strip or board of the thickness of the required spaces. In view of the common mode of spacing pickets, the court was of the opinion that this pavement was not patentable. — lb. 153. The substitution in a pavement of wooden blocks for stone blocks does not involve i^atent- able invention. — lb. 154. " A reconstruction of a machine, so that a less number of parts will perform all of the functions of the greater, may be invention of a high order ; but the omission of a part, with a corresponding omission in function, so that the retained parts do just what they did before in the combination, cannot be other than a mere matter of judgment, .depending upon whether it is desirable to have the machine do all, or less, than it did before." — lb. 155. A multiplication of existing seeding cyl- inders is not patentable. Moore et al. v. Tliomes et al., 3 Bann. & Ard. 13.— Bkown, 1877. 156. "It is well settled that an invention is not patentable until a machine has been per- fected ; and, if not actually used, made capable of useful operation." — lb. 157. When a pavement differs from a prior pavement simply in degree of finish and quality of stone, it is not patentable. Guidet v. City of Brooklyn, 3 Bann. & Ard. 291.— Blatchfohd, 1878. 158. Glue in broken sheets being old, there is no patentable invention in comminuted glue. Qlue Co. V. Upton, 97 U. B. 3.— Sup. Ct. 1878. 159. "A distinction must be observed between a new article of commerce and a new article which, as such, is patentable. Any change in form from a previous condition may render the article new in commerce ; as powdered sugar is a diffcS'ent article in commerce from loaf sugar, and ground coffee is a different article in com- merce from coffee in the berry. But to render the article new in the sense of the patent law, it must be more or less efiicaoious, or possess new properties by a combination with other ingredi- ents ; not from a mere change of form produced by a mechanical division. It is only where one of these results follow that the product of the compound can be treated as the result of the in- vention or discovery, and be regarded as a new and useful art."— /6. 160. " Where certain properties are known to belong generally to classes of articles, there can be no invention in putting a new species of the class in a condition for the development of its properties similar to that in which other species of the same class have been placed for similar development ; nor can the changed form of the article from its condition in bulk to small par- ticles, by breaking, or bruising, or slicing, or rasping, or filing, or grinding, or sifting, or other similar mechanical means, make it a new article in the sense of the patent law." — lb. 161. Cutting two or more series of collars side by side, from a strip of paper or other suitable material, in such a manner that the wide parts of the collar of one series shall coine opposite the narrow parts of the adjoining series does not amount to patentable invention. Snow v. Taylor, 4 Bann. & Ard. 5.— Lowell, 1878. 163. Where a certain kind of independent damper was used in one kind of reed organ, it was held that adapting such a damper to a differ- ent style of reeds did not amount to patentable invention. Burdett v. Estey et al., 15 Blatch. 349.— Blatchfokd, 1878. 163. Changing a part of a machine is not a substantial change, if after the change it operates in precisely the same way and accomplishes the same result that it did before the change. Knox et al. V. Q-reat Western Quicksilver Mining Co., 6 Sawyer, 430.— Sawyer, 1878. 164. A double leather covering on a soft ball was well known, and a single leather covering on a hard ball was well known. It was held not patentable to apply a double leather cover- ing to a hard ball. Mahn v. Harwood et al., 8 Bann. & Ard. 515.— Lowell, 1878. 165. " Mere discovery of a patentable improve- 412 INVENTION"— INSUFFICIENCY OP. ment does not constitute it the proper subject of a patent, unless it be embodied, if a machine, into working macliinery, and adapted to practi- cal use." Judson v. Bradford et al., 3 Bann. & Ard. 539.— CLn-FORD, 1878. 166. " Crude and Imperfect experiments are not sufficient to confer a riglit to a patent, but, in order to constitute an invention, the*party must have proceeded so far as to have reduced his conception to practice, and have embodied it in some distinct form. ' ' — Tb. 167. "It is not an invention of a new die to change the form of a die so as to malie a new shaped article under it. " Smith v. Am. Bridge Co., 8 Bissell, 313.— Blodgett, 1878. J68. There is no invention in placing a win- dow in the wall of a metallic chamber, whether the same be designed to give light outward or to permit the inspection of the flame. Kerosene Lamp Heater Go. v. Littcll, 3 Bann. & Ard. 312. —Nixon, 1878. 169. When it is once demonstrated that an entire trunk may be improved and strengthened by covering it with corrugations, is there any- thing patentable in applying that idea to the covers of the corners of a wooden trunk ? Gould et al. V. Ballard et al., 3 Bann. & Ard. 324. — Nixon, 1878. 170. Wooden corner sockets for show-cases being old, it is not patentable to make metallic corner sockets for the same purpose. Terhune V. Phillips etal., 99 U. S. 592.-Sdp. Ct. 1879. 171. Where a marked tag for a plug of to- bacco is old, attaching prongs to the tag and sticking it into the tobacco is not patentable in- vention, Lorillard et al. v. Ridgway, 4 Bann. & Ard. 564.— McKennan, 1879. 172. Where marks impressed upon the surface of plugs of tobacco were old, it was held not jjatentable invention to put similar marks on metallic disks attached to the tobacco plugs. — lb. 173. In the old art, referring to lamps,, a chimney base and chimney top were formed in one piece ; he who made them in two pieces did not produce a patentable improvement. Black- man, et al. V. Hibbler et al., 17 Blatch. 333. — Benedict, 1879. 174. Placing a surrounding rim on the upper part of a lamp-chimney -base, for the purpose of maintaining in place a separate top-piece, does not amount to patentable invention.— JJ. 175. "It is an elementary principle that the mere application of an old thing to a new use is not patentable." Gottfried et al. v. Phillip Best Brewing Co., 5 Bann. & Ard. 4. — Dybe, 1879. 176. "While the value and utility of a de- vice, and the fact that it has suijerseded others previously employed for analogous uses, is un ■ doubtedly entitled to weight in considering the question of patentability [Smith v. Goodyear Dental Vulcanite Co., 93 U. S. 486], it is, after all, a somewhat uncertain criterion. If the de- vice be, in fact, novel, it furnishes an additional reason why the inventor should receive the re- ward of his ingenuity ; but if it involves no exercise of the inventive faculty, its very utility is an aggravation of the wrong done by the pat- entees in seizing and appropriating that^which properly belongs to the public. ' ' Phillips et al. V. City of Detroit, 4 Bann. & Ard. 347.— Bhown, 1879. 177. Complainants' patent in suit was for a patented improvement consisting of blocks of wood cut from the trunks or branches of trees in their natural form, the bark only being re- moved, laid vertically upon a bed of gravel or sand, which was also used to keep the filling in position. Both elements of this patent were old ; sand unmixed with other substances had been used as a filling and foundation of stone pavements ; round blocks of wood laid verti- cally had been used- with filling of sand mixed with asphalt, tqr, or pitch. Complainants' pat- ent was held destitute of patentable novelty. — lb. 178. A process of packing and preserving meat after it has been submitted to preserving processes, then to a heavy pressure, then packing it and hermetically sealing it in packages or boxes, does not make it a patentable invention. Wilson Packing Co. et al. v. Clapp, 8 Bissell, 545. — Dbttmmond, 1879. 179. " Cooked meat put up in a solid form in its natural state, without disintegration or desic- cation in hermetically sealed packages,'" does not constitute patentable novelty. — lb. 180. A " can for packing food hermetically sealed, and constructed of pyramidal form, with round corners, and with off-set ends to support the head," does not embody patentable novelty. —lb. 181. "There cannot be a patent for a mere form, unless (he form is of the essence of the in- vention. It is not easy to describe what consti- tutes the essence of the form so as to make it the subject of a patent, and distinguish it from that which is mere form. Sometimes, as the courts say, the form may be the substance of the invention, and there may be such a change produced in a certain article as to make It [the article manufactured or otherwise, whatever it may be] the subject of a patent."— /J. INVENTION— INSUFFICIENCY OF. 413 182. Taking a vegetable gum and washmg it with hot water, so as to make it fit for a chewing gum, does not amount to patentable invention when hot water has heen used for washing india- rubber and other gums. Adams v. Loft, 4 Bann. & Ard. 495.— Nixon, 1879. 183. An improvement of complainants' patent In suit, as expressed in the claim, was : " The use and adaptation of the body or sides of a stove or range D, to serve as and perform the office of a flue or chimney over the lamp or oil- holder A, substantially as described, and for the purposes set forth. " In view of the known em- ployment of chimneys over lamps for all the purposes indicated in this claim, this patent was held destitute of patentable novelty. Gouse et al. V. Johnson et al., 4 Bann. & Ard. 501. — McKJENKAN, 1879. 184. " The application of old mechanical devices, without material change, to a use in which they were not employed before, but which was known and had been practised,, does not constitute a patentable invention." — lb. 185. An improvement of complainants' patent in suit, as expressed in the claim, was : " The insulation of the lamp or oil-holder by non-con- tact with the heater, stove, or range, substan- tially as described and set forth." The insula- tion was effected by making the legs of the stove long enough to allow the lamp to be placed under it without touching. Thereof the court said : " To call this inveqtion is to misapply the term. The means of effecting the desired result are so obvious that it does not require ordinary mechanical skill to devise and apply them." — 186. "Plain-edged" and " jaggedly cut" bags being old, and plain-edged paper bags notched at the mouth also being old, there is no patentable novelty in a notched " jaggedly cut mouth" paper bag, the notch being for the ex- press purpose of enabling the consumer to over- come the resistance of the felted edges to the opening of the bag. ArkeU'a Application, 15 Blatch. 437.— Shipman, 1879. 187. " The application of an old contrivance to a new purpose is not patentable, when the old and new purposes, and the object to which the contrivance is applied, are merely analogous. If the use of an old contrivance produces a new effect, the new manufacture or process may be patentable because the new use is not analogous to the former one ; but if the new use is simply on a new occasion, not producing a new effect, the use is analogous to what had been done before."—/*. 188. "If the effect of the old contrivance, when applied to the new object, is simply an effect in an analogous object by the use of pre- cisely the same means, the application of the new use is not patentable." — lb. 189. " Invention often involves a new result, first thought of by the patentee ; and in such cases, the fact that the mechanical changes he has made are not ditficult is often unimportant. The cases in which invention is wanting are usually those in which the result is old in kind and the change of means is obvious, or has been used in analogous machines or articles, and then the smallness of the change is very likely to be decisive against the patent." Stewart v. Mahoney, 4 Bann. & Ard. 84. — Lowell, 1879. 190. A patented improvement, as stated in the claim of the patent in suit, was : " As a new article of manufsCcture, writing-paper whereof the lines are embossed by or with an ogee pat- tern, which ■ exposes a like face on opposite sides." The court held that "embossed lines on writing-paper being old and well known, and ogee lines embossed on paper being equally so, there was no room to claim an invention for , a distinct and new product merely by changing the spaces of the ogee lines so that they might be used for writing-paper." Gone v. Morgan Envelope Co., 4 Bann. & Ard. 107. — Lowell, 1879. 191. Defendants' patent in suit was for a mode of cutting soles for boots and shoes, and the mode was to place the die upon the leather and cut one sole, then to reverse the die and cut the second. This was held not to amount to, patentable invention. Walker v. Rawson et al., 4 Bann. & Ard. 128.— Lowell, 1879. 192. ' ' Both the loose pulley and the brake de- vices are known in mechanics to produce a stop motion in machinery. Being equivalent, there is no invention in substituting the one for the other." Willimantic Linen Go. et al. v. Clark Thread Go. et al., 4 Bann. & Ard. 138.— Nixon, 1879. 193. The complainant's patented improvement, as expressed in the claim, was : " As an article of manufacture, the bale B, of plasterers' hair, consisting of several bundles. A, containing a bushel each by weight, enclosed or encased by paper bags or similar material, and united, com- pressed, and secured to form a package, sub- stantially as specified. " This improvement was held destitute of patentable novelty. KiTig v. ProsUl et al., 8 Bissell, 510.— Dhummond, 1879. 194. Where a metal chair seat has been per- forated, there is no invention in perforating a wooden chair seat. Gardner et al. v. Herz et al, 16 Blatch. 303.— Blatchpokd, 1879. 414 mVENTIOJSr- INSUFFICIENCY OF. 195. To fasten both bands of a truss in a mode which is old for fastening one band, or to fasten the band to the plate of the pad rather than to the brace which holds the pad, with no change In the operation of the band, does not involve patentable novelty. Elastic Truss Co. v. Page et al., 4 Bann. & Ard. 338.— Lowem,, 1879. 196. " Some changes, such as a substitution of brass for iron or of steam-power for horse- power, are, at the present day, presumed to be within the common knowledge of mechanics." Dunbar et al. v. Albert Meld Tack Co., 4 Fed. Rep. 543.— Lowell, 1879. 197. "The decision," as to presence of pat- entable invention, " does not necessarily depend upon the amount of thought, or even of experi- ment, whicli may have been had in reaching the result. Thus, if an old machine or process is put to a new use, invention is positively ex- cluded, although the new use may apparently be very remote from the old. requiring experi- ment to ascertain its practicability, and though the actual operation of the machine or process , may not be exactly the same in the new as in the old application, provided no new means are, in fact, employed." — lb. 198. The improvement of the patent in suit was stated therein as follows : " The nature of our invention consists in combining two large, light, tight, firm, stout tanks with an ordinary railway car, making the tank practically a part of the car, so as to carry the desired substance in bulk in the car itself, or in a permanent fix- ture or part thereof, instead of in barrels, casks, hogsheads, tierces, or other movable vessels or packages, as is now universally done on railroad cars, and thereby saving the'weight of the bar- rels, casks, hogsheads, tierces, or other movable vessels or packages." Large casks loaded and cleated on ordinary cars were old, and their location over the trucks was old. The ifaprove- ment was held destitute of patentable .novelty. Densmore et al. \..Scofield etal., 102 XJ. S. 375. —Sup. Ct. 1880. 199. Where the cross-bar of a shawl-strap had been made measurably stiff by the use of stiii leather, it was held not to amount to patentable invention to make it still stiCEer by the use of iron. Crouch v. Boemer, 103 U. S. 797. — Sup. Ct. 1880. 200. The improvement of the patent in suit was an ornamental chain consisting of solid links and open spiral links made of tubing, the latter being finished before they were sprung into the solid links, and the connection being made by thus springing the links together. " Chains having alternate open and closed links. the open links being spiral and sprung into the closed links, were known. So were chains made entirely of spiral links, even of open spiral links. A chain had also been made and worn, and it was for sale in the stores, the links of whicli were hollow." "The coils were soldered together after the' links had been sprung into each other." "Omitting that process and the outward deflection of the ends, and alternating the links with other links, made closed and soldered, is not invention. ' ' Pearce v. Mulford et al., 103 U. S. 113.— Sup. Ct. 1880. 201. " All improvement is not invention and entitled to protection as such. Thus, to entitle it, it must be the product of some exercise of tlie inventive faculties, and it must involve some- thing more than what is obvious to persons skilled in the art to which it relates." — lb. 202. " There could be no invention in putting a stereoscope upon one kind of well-known stand instead of another. It was merely putting the old stand to a new use." Quirolo v. Ardito it al, 17Blatch. 400.— Whbblbr, 1880. 303. " If the ordinary form of corrugated iron, when applied to the roof or sides of a building, does not give suflacient air spaces, there is nothing new in the idea of making tliem larger, and diminishing the surface of iron at the point where it is nailed to woodwork, although it might remedy the objection." Belt V. Critterulen et al., 1 McCrary, 309. — Nelson, 1880. 204. Complainant's patented device for clean- ing windows consisted of an elastic strip [rub- ber] attached at one end to a holder, with a yielding support behind the strip, which support was a rubber tube and with rubber plates at the ends to adapt it to service in corners. A broad strip of rubber firmly inserted in a wooden handle had previously been used in cleaning the decks of ships ; also a handle like that of a hair- brush, furnished with rubber surfaces, had been used for scouring. Complainant's device was held to show only mechanical skill. Perfection Window Cleaner Co. v. Bosley, 9 BisseU, 385. — Dyeb, 1880. 205. Japanning being old, and furniture spriiigs being old, a claim to " japanned furni- ture springs" covers nolhiug patentable. Eagle- ton M'fg Co. V. West, Bradley c6 Carey M'fg Co. ct al., 18 Blatch. 318.— Wheeler, 1880. 306. The essence of complainant's improve- ment in pail ears was to have ' ' the lower sides of both points of the staples bevelled or cut away, so as to cause them to bend upwardly and clinch within the wood when being driven. " A staple with, one point bevelled on one side and the INVENTION- INSUPFIOIBNCY OF. 415 other point bevelled on the opposite side was old. The improvement was held to show noth- ing more than a "mere change of form." Double-pointed Tach Co. v. Two Biiiers M'fg Co. et al., 9 Bissell, 358.— Dybk, 1880. 207. " Cards for buttons faced with foil and divided into spaces by bands were well known and in common use. Those for pearl buttons may not have been divided into dozens, in rows of three by four, but they were divided so that dozens could be readily cut from the card, in two rows of six and one of twelve ; and there were cards divided into spaces for several dozens by such bands as the patent describes ; and cards of cloth buttons spaced for dozens in rows of three by four. With these things known, there was nothing rising to the level of inventive skill in arranging pearl buttons by dozens on cards, in three rows of four." Plimpton v. Winslow, 3 Fed. Rep. 333.— Lowell, 1880. 208. By the court : " There is considerable doubt whether the patent, as between the owners and public generally, is of any validity. Hay has long been baled, to the common knowledge of all. The whole invention in controversy con- sists in baling hay cut short in the same manner. The well-known process of baling hay was ap- plied to another kind of hay." Faulhs et al. v. Gampet al., 17 Blatch. 432. — Whbeleh, 1880. 209. Complainant's patent claimed: "The method of utilizing the leather of old card cloth- ing by heating it with gum-tragacanth and re- setting it with teeth, reversely to the original teeth, substantially as described." Complainant claimed that the use of the gum-tragacanth was non-essential. Prior use, where the gum-traga- canth was not used, and where the leather was turned over instead of around, was proved. Held, to anticipate the patent. Brummitt v. Howard et al., 8 Fed. Rep. 801.— Lowell, 1880. 210. " Given the two facts that a clock dial, with printed paper dial, a metallic back and a metallic rim uniting the back and the paper dial, was old ; and that a metallic back and with a lateral outside flange, through which screws were inserted to fasten the dial to the clock-case, was common in use ; it was no material part of the invention to make the rim correspond gen- erally with the old pattern of the back." Boot v. E. N. Welch M'fg Co., 17 Blatch. 478.— Shipman, 1880. 211. A fare-box with two compartments and a window to the upper compartment being old, it is mere aggregation and duplication to add another window to the upper compartment. Slawson v. Grand St., Prospect Pan-k & Flatbush R. B. Co., 17 Blatch. 512.— Benedict, 1880. 212. By the courf: "Assuming the claim to be for a combination, the only novelty pretended consists in the arranging the fare-box, lamp, and reflector in such a manner that the light from the lamp will be thrown into the fare-box. No invention was required to so arrange these parts. It would not fail to be accomplished by any per- son of ordinary intelligence and experience who should attempt it." — Ih. 213. Applying a mode of feeding, which is old in lime kilns, to a quicksilver furnace is not invention. Knox et al. v. Quicksilver Mining Co., 4 Fed. Rep. 809.— Field, 1880. 214. Wire fences being old, if barbed wire for other than fencing purposes had been old, then the substitution of barbed wire for fences would not have been an invention. Washburn & Moen M'fg Co. et al. v. Haisli, 10 Bissell, 65. — Dkummond and Blodgbtt, 1880. 215. The feature of improvement in a patent for barbed wire fences was pointing the barb at both ends by cutting it off diagonally. Barbs had been before this time made sharp by cutting the sheet metal used diagonally, and it was held to be no invention to point wire by cutting it diagonally. — lb. 316. The idea of barbing fence wire was the subject of one patent. The idea of fixing the barb rigidly upon the wire by twisting another wire upon it was the subject of a second patent. The looping of the barb around the fence wire was the subject of n third patent. A fourtli patent was for all these features combined. It was held not to embody patentable invention. — lb. 317. " Soaps made with the purer carbolic acid which existed in 1867 may be applicable to pur- poses to which soaps made with less pure car- bolic acid cannot be applied, but that only shows a difference in degree and not invention." Buchan et al. v. McKesson et al., 18 Blatch. 485.— Blatchford, 1880. 218. " There are undoubtedly cases where a combination may be made of parts never com- bined before, where no invention is involved ; such is the case where a well-known contrivance is used to perform a function exactly analogous to that in which it was formerly used. ' ' Wisner etaZ. V. Grant et al., 7 Fed. Rep. 485.— Wal- lace, 1880. 219. By the court : " The perforations of no annular series had been placed so closely to- gether, probably, as Caldwell placed them, but such series had been made before, and it was mere workmanship and not invention to make them thicker if they were needed thicker. " Tifft V. Sharp et ah, 18 Blatch. 138.— Wheeler, 1880. 416 INVENTION— INSUFFICIENCY OF. 330. The steaming of oil wells, in order to melt paraffine, being old, and surrounding the eduction pipe with an outer casing being old, it was not invention to carry a steam-pipe down between the eduction pipe and casing. Double- day V. Soess, 11 Fed. Rep. 737. — Acheson, 1880. 331. For an example of what was held to be mere mechanical skill in grates for stoves, see — . Wier V. No. Chicago R. Mill Co., 9 Bissell, r)08.— Blodgbtt, 1880. 333. By the court : " So far as the first claim is concerned, the alleged invention is simply securing the door of the time-lock with a key, and providing such door with an aperture through which the clock can be wound. In view of the Rutherford clock, the watchman's lime detector, and, indeed, the locks and watches which are commonly in use, the im- provement seems to me to have been so obvious, and plainly a mechanical one, that it is unneces- sary to dwell upon this part of the case. " YaU Ijoch M'fg Go. et al. v. Norwich Nat. Bank, 19 Blatch. 123. - Shipmau, 1881. 333. Stay-strips for overhanging seams in leather shoes being old, and leather strips with beaded edges being old upon harness, ' ' a stay- strip with beaded edges to protect the stitches could not be patented as a new article of manu- facture. " Smith et al. v. Merriam et al. , 6 Fed. Rep. 903.— Lowell, 1881. 334. By the court : " Both experts agree that every mechanic knew, and for years had known, that a slot and pin and a connecting-rod were alternative modes of obtaining this change of motion. If so, the change did not require inven- tion." Orompton v. Knowles et al., 7 Fed. Rep. 304.— Lowell, 1881. 335. Complainant patented a process consist- ing of two steps for forming boot and shoe counters. Defendants practised the process by passing the blanks through two old machines, each designed for use in making counters. Held, that the claim could not be sustained. Moffitt v. Sogers et al., 8, Fed. Rep. 147.— Lowell, 1881. 336. By the court : " I am not aware that a patent has ever been sustained for a process or method which consisted of employing an old machine for the veiy purpose for which it was made. If any person discovers how to use an old machine to the best advantage, he is only a skilful workman, not an inventor. " . . . " I do not mean to say that a patent cannot possibly be supported for a process or method which con- sists only of applying an old machine to a new use. Many of the ablest writers and jurists as- sert that such a claim is possible. ... If one is ever supported, it will be when the new use is so remote from the old use that a court or jury can say that a new idea has been discovered." —n. 337. A suspension ring for cards, the same as a prior umbrella fastener except in mere change in form, is not a patentable invention. Chrifflths et al. V. Holmes, Booth & Baydens, 8 Fed. Rep. 154.— Shipman, 1881. 338. "Water traps of cast lead being old, it is not patentable to make them by drawing them in dies. McOloskey v. Du Bois et al., 19 Blatch. 205.— Whbelek, 1881. 229. The patented thing was a sweat lining for hats, extending well out upon the brim, crimped over the angle formed by the brim and crown, and stitched to the brim by stitches pass- ing perpendicularly through the brim and out- side of the crown band. The sweat lining thus located on the hat was old, the perpendicular stitches were old elsewhere, the crimping was held to have been done before by the heads of the wearers, and the device was found destitute of patentable novelty. Beatty v. Hodges et al., 19 Blatch. 381.— Wheelbk, 1881. 230. The result of holding firmly the ends of railroad rails by means of bolts and a plate being well known, making the plates ribbed does not amount to patentable invention. Fisher, Ex parte, 20 O. G. 957.— Wylib, 1881. 331. In complainants' patent on '" improve- ments in children's carriages," certain combina- tion claims had " profile frames" as one element, which were profile frames of horses. Prior structures had profile frames of swans. Held, that the difference was not [mechanically] pat- entable. Grandall et al. v. Ricliardson et al., 8 Fed. Rep. 808.— Blatchford, 1881. 232. Die-drawn lead traps, as compared with cast traps, have walls of greater solidity and more perfect uniformity, they are more elastic, and the quality of the metal is changed and im- proved by the process of drawing ; but all these differences are effects which were before well known ; the die-drawn trap is not patentable. McOloskey v. Dv, Bois et al., 30 Blatch. 7.— Whebleu, 1881. 233. Complainant's patented mode of canning meat was [1] to boil it ; [2] pack it yet warm in a case tightly enough to express the air and superfluous moisture ; [3] close the can air- tight. The boiling of meat was old ; air-tight canning of meats under pressure was old. Held, that the patented mode did not amount to in- vention. Wilson Packing Co. v. Chicago Pack- ing & Provision Co. et al., 10 Bissell, 559. — Blodqett, 1881. INVENTION— INSUFFICIENCY OP. 417 334. While extensive use is evidence tending to establish sufficiency of invention, it has no conclusive force where the use is evidently due to the care and skill used in preparing the pat- ented article for consumption. — lb. 235. Complainant's patent claimed " a can for packing food hermetically sealed and con- structed of pyramidal form, with rounded cor- ners and ofl-set ends to support the heads, said heads being secured as shown and described. ' ' Pyramidal-shaped cans were old ; cans not pyr- amidal, but with rounded corners and off-set ends, were old. Jleld, that complainant's can did not amount to an invention. — lb. 236. Complainant's patent claimed " as an improved article of manufacture solid meat compressed and secured within a pyramidal case or can, so that said can forms a mould for the meat and permits its discharge as a solid cake, substantially as specified." Meat compressed into cans [shape not shown] was old ; pyr- amidal cans were old. Held, that complainant's patentee had not exercised patentable invention. —lb. 237. It is mere mechanical skill, and not in- vention, to substitute for a lever, rod, rack, and pinion— as a means of rotating a shaft— some other mechanical means of giving such rotation. Bavia et al. v. Brown et al., 19 Blatch. 263. — Blatchford, 1881. 238. A fertilizer composed of ground bom, calcined plaster, nitrate of soc'a, sulphate of am- monia, and dry muck or the like being old, there was no invention in substituting dissolved bone andground plaster for the calcined plaster, the said substitutes being known fertilizers. Boykin et al. V. Balcer et al., 4 Hughes, 383. — Morkis, 1881. 239. " Whenever a new material is substituted for an old one in an article of manufacture, as silk for cotton, steel for iron, metal for wood, a better result may be obtained, and one which may give a greatly increased beauty, usefulness, or commercial value to the article produced, and may greatly increase the demand for it ; but this is a result which is to be attributed to mechanical skill or business enterprise, and not to invention as that word is applied to patents." —lb. 340. A furnace with a fan to draw air from it and force it into casks for heating them being old, there is no invention in forcing the air through the furnace and then into the casks, even though the result may be improved. Gottfried V. Orescent Brewing Co., 9 Fed. Rep. 763.— Gresham, 1881. 241. An electric wire " covered with braided fibrous covering and dipped in wax" being old, and bituminous matter pressed into such a fibrous covering being old, it is not invention to press wax into such a fibrous covering. Western Electric M'f'g Co. v. Ansonia Brass & Copper Co., 30 Blatch. 170.— Shipman, 1881. 343. It being old to form a lip around the mouth of a, rubber shoe by doubling the edge, and it also being old to form ribs in rubber fabrics by rolls, a rib formed around the mouth of the shoe by rolls was held to be a mere double use. Meyer et al. v. Goodyear India Rubber GlomM'fg Co., 20 Blatch. 91.— Shipman, 1881. 243. Artificial honeycomb foundation wholly of wax and with pyramidal cell-floors being old, and such foundation partly of wax and with flat cell-floors being old, there is no inven- tion in making such foundation wholly of wax and with flat cell-floors. Van Deusen et al. v. NelKs, 20 Blatch. 45.— Blatchford, 1881. 244. A " cylinder-notch" for drawing off slag being old in a blast furnace, there is no invention in applying a cylinder-notch to a cupola furnace for the same purpose. Vinton et al. v. Ha/mil- ionetal., 21 O. G. 557.— Sup. Ct. 1883. 345. A patent prior to that sued on showed the same device, a pavement, effecting the same result as that described in complainant's patent, but such result was not described in the prior patents. Complainant's patent held to be antic- ipated. Stone V. Chicago, 104 U. S. 547.— Sup. Ct. 1883. 246. The patented device under consideration being a gang plough, corn-planters and horse- rakes were held to be a part of the prior art. Newton^. F. & B. M'fg Co., 11 Bissell, 405.— Blodgbtt, 1883. 347. By the court : " It would seem that the employment of sheet qietal as a lining for the bottom of a starch tray involves no invention. The bottom had been made of vs-ood, and un- doubtedly, when lined with lead or copper or galvanized iron, would be more durable and more easily cleaned. But it is within common knowledge that such linings had been used anal- ogously in many other vessels made to contain liquids because of these advantages." N. T. Grape Sugar Co. v. Am. Grape Sugar Co. et al., 30 Blatch. 386.— Wallace, 1883. 248. A certain kind of furnace upon one side of a chimney being old, there is no invention in putting such a furnace upon two sides of a chimney. Millner v. Voss et al., 4 Hughes. 262.— Bond, 1883. 249. Double-recessed lap-joints in sheet-metal structures being old, and soldering by dipping being old, and complainant's alleged invention 418 INVENTION— INSUFFICIENCY OF. consisting in " a can or oflier Vessel made of that metal, in -(vhicli the top or bottom is joined ■to the sides by a double-recessed lap-joint," the court said : " The patentee has merely aggre- gated these elements in his can, without causing them to perform, by their united action, any function -which they did not perform separately before. . . In the conception or material em- bodiment or operation of such a union of well- known elements, we cannot detect any patent- able merit." Combined Patents Can Co. v. Lloyd, 11 Fed. Rep. 153.— McKennan, 1882. 350. Where it is old to put up meat in a cer- tain way by broiling, roasting, or steaming, it is not patentable to boil and put up meat in the same way. Wilson Packing Co. et al. v. Chicago Packing & Provision Co. et al., 105 U. s. §66. — Sup. Ct. 1883. 351. It beiiig old to put up meat in one form of can, the mould for the meat being formed by the can, it is not patentable to use in that con- nection another form of can — to wit, a pyramidal can. — Ih. 252. Loops upon whip-sociiets being old, there is no invention in attaching the loop to a new form of socket. Wotden et al. v. Fisher et a?., 11 Fed. Rep. 505.— Bhown, 1883. 353. Complainants' patent was for " an earth- enware saucepan, the bottom of which is round- ed and has a regular surface of or about an equal thickness throughout." Earthenware vessels being old, and cast-iron vessels having bottoms of the shape in question being old, it was seriously questioned whether what the pat- ent claimed amounted to a patentable invention. Scott etal. V. Evans, 11 Fed. Rep. 726.— Ache- son, 1882. 254. By the court : " What Guidet did was to show that if a stone .were used with rougher side surfaces than those found in the old pave- ment, all artificial means of keeping the trans- verse joints open might be abandoned and the requisite surfaces secured. This was simply carrying forward the old idea, and doing what had been done before in substantially the same way, but with better results. The change was only in degree, and consequently not patentable. ' ' Ouidet y. City of Brooklyn, 105 U. S. 550.— Sdp. Ct. 1882. 255. When an inventor has applied his im- provement to one form of a class of articles, ob- vious modifications of the improvement, to adapt it to other forms of the class, are not substantial change. Putnam v. Hutchinson, 211 Bissell, 283. — Blodgbtt, 1883. 256. An anti-clinker opening between a dump- ing grate and the bottom of the flre-pot above it, with the grate larger in area than such bottom, was old. Downwardly contracted fire-pots were old. There was no new effect had by uniting the two. Perry et al. , Trustees, v. Oo-operatire Foundry Co. et al., 20 Blatch. 505. — Blatch- FOED, 1883. 357. An anti-clinker opening between a dished grate and a flre-pot was old. The union of the two involved no invention. — lb. 358'. Complainants had an expired patent for a machine for making shoes, and later patents for the product of such machines and the proc- ess of making such products. Held, that after the machine had been made the process and product did not present patentable subject- matter. McKay et al. v. Jackman, 20 Blatch. 466.— Wheeler, 1882. 359. Chair-seats of crossed veneers being old, perforated chair-seats being old, and concaved chair-seats being old, there is no invention in making a perforated chair-seat of crossed veneers formed to a concave shape. Oardner et al. v. Here etal., 20 Blatch. 538. -Wallace, 1882. 360. The popularity and success achieved by an improvement is not always evidence of the exercise of invention, but may be due to other matters. — lb. 361. By the court : " It is plain that the mere addition of hooks, either moving upward or downward, does not constitute invention." JSTeacy v. Allis, 23 O. G. 1631.— Dyer, 1882. 363. Wire-frame dummies for displaying clothing being old, it is not patentably novel to make the shell of such a dummy of papier- mache, that substance having been before used for making lay figures representing celebrated persons, which had appropriate costumes. Pal- merbing v. Buchlvolz, 31 Blatch. 163. — Wallace, 1883. 363. " If mechanics, skilled in the particular department of construction, could have seen at a glance the feasibility of the change, then, although the device may have been mechanically new, it was not intellectually novel." — lb. 264. " The new application of an old material will not generally support a patent." — lb. 265. The patent in question was for a rocking- chair mounted on an elevated platform. The prior art contained a rocking-chair mounted on a platform, with a flange on the outside of each rocker to prevent lateral movement of the rocker, and with metallic plates to prevent the rocker from being thrown off the platform. The patented device differed from this simply in tonguing the rocker into grooves in the plat- form at each end, and using an elastic band in place of metallic plates. The court held that INVEKTIOX— IXSUFFICIENCY OF. 419 there was not sufflciont invention to support a patent. Singer Rocking Chair Go. v. Toby F. Go., 11 Bissell, 353.— Drdmmond, 1883. 266. By the court : " It is obvious that a plain ring, or, a ring with radial slits, has the same action in combination with an annular recess, in which it is held by its elastic force alone, so far as regards its readjustment in the recess when disturbed, that a ring with inward non-continu- ous projection has. The coaction between the recess and the part of the ring in it, when the part of the ring out of it and next to the stock is disturbed, is the same in all three cases. There- fore, if the ring with inward non continuous projections existed before, even though without the annular recess, there was no patentable in- vention in using such a ring with the old an- nular recess with which the plain ring has been used." Searls v. Merriam et al., 30 Blatch. 263.— Blatchford, 1883. 367. By the court : " The only advantage which the public gained from the specifications and claim of the complainants' patent was that Welling made a selection of a few ingredients from the larger number of Westendarp from which material might be chosen to experiment with, and we do not think that such an exercise of judgment or mechanical skill should be dig- nified with the name of invention." Welling et al. v. Gram et al., 23 O. G. 189.— Nixon, 1883. 268. Doubted whether splitting the stems of feathers for dusters in order to give increased pliability amounts to invention. Nat'l Feather Duster Co. v. Dearborn Duster Go. et al., 24 O. G. 497.— Blodgbtt, 1883. 269. " Provisions for upright and horizontal stays and for annular stays for the wire cone of a mouse-trap" are not inventions. " They arc suggestions which would occur to any skilled mechanic in constructing such chambers of wire cloth, from the very nature of the material, and are mere matters of workmanship, involving no invention." Nat'l M'fg Go. v. Myers, 15 Fed. Eep. 237.— Matthews, 1883. 370. By the court : "It is not invention to transfer such workmanship [double seaming] from the draft eye of the harness to the terrets and rings of the harness. " Theberath v. B. & ■ C. Harness Trimming Co., 15 Fed. Rep. 346.— Nixon, 1883. 271. Merely carrying forward the original and previous conceptions of another is not invention. — /*. 272. By the court: " I am further inclined to think that, if an article has been made by hand in such a way that it might have been used sep- arately from the larger thing to which it was joined, though there was no occasion so to use it, a patent cannot be taken out for that article as a new manufacture. " Hatchet al. v. Moffitt, 15 Fed. Rep. 353.— Lowell, 1883. 373. By the court : " There was no invention in adding to the solid conical bolt the screw thread of the cored conical bolt." Hall v. MacneaZe et al., 107 U. S. 90.— Sup. Ct. 1883. 374. By the court : " The process of develop- ment in manufactures creates a constant demand for new appliances, which the skill of ordinary head workmen and engineers is generally ade- quate to devise, and which, indeed, are the nat- ural and proper outgrowth of such development. Each step forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant a single party a monopoly of every slight advance made, except where the exercise of invention above ordinary mechanical or en- gineering skill is distinctly shown, is unjust in its principle and injurious in its consequences. The design of the patent laws is to reward those who make some substantial discovery or inven- tion which adds to our knowledge and makes a step in advance in the useful arts. Such invent- ors are worthy of all favor. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and sponta- neously occur to any skilled mechanic or operator in the ordinary process of manufactures. Such indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate inven- tions. " Atlantic Works v. Brady, 107 TJ. S. 193. -Sup.' Ct. 1883. 375. For an example of a case where a union of qld elements was held not to constitute a pat- entable invention, see — . lb. 276. For an example of the exercise of mere mechanical skill in the production of a soldering tool which was a practical improvement on its predecessors, see — . McMurray v. Miller et al., 16 Fed. Rep. 471'.— Waitb, 1883. 277. It is not patentable invention to place a glass on the side of a fare-box, so that passengers may look therein," or a glass on the top thereof, so that the ordinary street car lamp may light the interior thereof. Slawson v. Grand St. , P. P.&F. B. B. Go., 107 U. S. 649.— Sdp. Ct. 1883. 278. Where the prior art showed all the parts of the patented thing— a rolling colter for ploughs— and the patentee had simply changed the form and position of the parts, it was held that the patentee's improvements were matters of mere mechanical skill. Manny v. Oyler, 5 McCrary, 232.— Treat, 1883. 420 INVENTION— INSUFFICIENCY OP. 279. Complainant's patented thing was a cor- rugated, metallic shingle having nail-holes in it. Metallic roofing in small sheets, overlapping when laid, was old. Corrugated metallic roofing laid in sheets, and overlapping when laid, was old. Held, that complainant's patented thing did not amount to an invention. Am. Iron Co. V. Anglo- Am. Hoofing Co., 21 Blatch. 334. — Wallace, 1883. 280. By the court : " It would seem that the only distinction that can he suggested between the old method described in the patent is in the extended racks— in the use of a girdle frame a few inches smaller instead of a few inches larger than, the racks." Clark Pomace Holder Co. v. Ferguson, 31 Blatch. 376.— Coxe, 1883. 281. By the court : " It seems to me that if any mechanic had been directed to make a wheel case of two plates, which should contain water-tight openings for the induction and escape pipes, he would have found it almost a necessity to cast the openings upon one of the plates ; and I think there is no invention what- ever involved in the idea of casting these open- j Ings upon one plate instead of casting half or a i portion in one and the other part in the other." j Backus Water Motor Co. v. Ikierk, Jr., etal., 24 : O. G. 994.— Blodgbtt, 1883. i 283. The prior art contained a machine for forming heel stiSeners for boots and shoes, wherein the fiange-forming apparatus was moved in a straight line and the heel seat was formed straight ; and it was held that there was nothing patentable in moving the flange-forming apparatus in the arc of a circle and thereby making the thread curved, there seeming to be no practical advantage in having the heel seat somewhat curved. Moffitt v. Cavanaugh, 17 Fed. Rep. 336.— Shipman, 1883. 283. The patented thing being a plough- standard, with a peculiar arrangement of bolts and bolt-holes in the head, a cultivator standard having a differently shaped head, but the same arrangement of bolts and bolt-holes, was held to anticipate the patent. Matteson et al. v. Caine, 8 Sawyer, 498. — Sawyer, 1883. 284. In a hat-forming machine of the prior art, a cowl or hood was drawn over a bat by hand. In the patented machine a cloth was wound around the bat by the revolutions of the cone. The patented structure was held not to embody patentable invention. Brett, Adminis- tratrix, y. Quintard,' Administrator, 17 Fed. Rep. 539.— Shipman, 1883. 385. Complainants' claim sought to monopo- lize the treble combination of any time lock, any combination of key lock, and the multiple bolt- work of a single door of a vault or safe. Multi- ple bolt-work was old. Safe doors fastened by key. locks, by combination locks, and by time locks were old, and all had been applied to inde- pendent bolt-work. Two combination locks had been used upon a single door with independent bolt- work ; and a time lock and a combination lock had been put upon a single door with two sets of multiple bolt-works. In this state of the art it was held that there was no patentable nov- elty in putting one old form of lock, a time lock, in place of another, a combination lock, in the instance above mentioned of the two combina- tion locks dogging one compound bolt-work. Nor was it patentable to substitute a mere known multiple bolt-work for two such bolt- works with which a time lock and a combina- tion lock had been combined in another of those instances. Yale Lock M'fs Go. et al. v. Berk- shire Nat'l Bank et al., 17 Fed. Rep. 531.— Lowell, 1883. 386. In the case last referred to, the court said : " There never was a time, in my judgment, since the first lock was invented by Tubal Cain, or whoever was the inventor, when there was any patentable novelty in combining two locks with a single door. There may be no record of its having been done, but no one can doubt that when one lock was found to be inadequate an- other was added. I cannot make this plainer by argument, but I may perhaps by illustration. When nails were invented and had become pub- lic property, the carpenter who had the right to use one nail might use two if he found that one would not fasten his two pieces of wood suifl- ciently for his purpose. If one has invented a pair of shoes of a new form and another a pair of shoes of a different form, a combination, con- sisting of putting a shoe of one of these forms upon the right foot and one of the other form upon the left, would not be patentable. If one has made a new plough and used it with oxen, it is not patentable to use the same plough in combination with a horse independently of the mechanical adaptation. In the language of the old law, it is a ' double use. ' To the man who invents a lock there must always remain the right to use it on an old door in addition to any old lock which he finds or may choose to put on that door." — lb. 287. " Sometimes better results are produced by mere mechanical skill without the exercise of invention. The law does not extend to cover such cases, . . . nor where the change is merely in degree and not new." Wood et al. v. Packer, 17 Fed. Rep. 650.— Nixon, 1883. - 388. Complainant's patented device was a INVENTION -INSUFFICIENCY OP. 421 rubber boot-strap. This strap was old in metal, and it was attached to the boot in a manner common for attaching rubber handles to bags and the like. Complainant's device was held not to embody invention. Boston Rubber Shoe Co. V. Larkin et al., 18 Fed. Rep. 93. — Lowbll, 1883. 389. Complainant's patent claimed "an arti- cle of manufacture, to wit : a bale of plaster- ers' hair, consisting of several bundles, enclosed in bags and compressed and secured in the form of a package." Held, that the bagging of materials generally being old, and the compres- sion of materials generally being old, the thing claimed did not amount to a patentable inven- tion. Kingv. Oallun et al., 109 U. S. 99.— Sdp. Ct. 1883. 290. Complainant's invention was a wire staple for fastening pail handles to wooden pails, with both points bevelled upon the same side, so that both points stand upwardly on being driven into the wood. Double-pointed wire staples, with a bevel on opposite sides of the points, were old. It was held that complainant's change did not amount to a patentable invention. Double- pointed Tack Co. V. TiBO Rivers M'fg Co. et al., 109 U. S. 117.— Sup. Ct. 1883. 291. The patent being for forming the bottom of trays of galvanized iron instead of wood, it was held that the substitution did not constitute patentable invention. N. T. Orape Sugar Co. V. Buffalo Qrape Sugar Co. et al., 21 Blatch. 519.^Shipman, 1883. 392. For changes in a box loop for harnesses made by defendant and held to be immaterial, see — . Brighton v. Wilson, 18 Fed. Rep. 378. —Colt, 1883. 293. The patent in suit being for an improve- ment in reed organs, and the court below having sustained the patent over diflerences in the prior art which consisted in the size of certain valve openings, the Supreme Court reversed the deci- sion of the court below on this point, and said that " the absolute length and size of the valve openings was a matter of judgment in view of the state of the art, . . . regulated by the judg- ment of the manufacturer, as to the quantity of the air necessary and the resistance to be over- come in working the valve, and the inconven- ience of the leakage of air." Estey et al. v. Burdett, 109 U. S. 633.— Sup. Ct. 1884. 294. By the court : " In view of the state of the art, there was no invention in claim 1 of the patent in using, to attach the base-pan, an old mode used in attaching other projecting parts of the stove." Bussey et al. v. Excelsior M'fg Co., 110 U. 8. IBl.-Sup. Ct. 1884. 295. Complainants' patent for processing canned goods covered in its first claim the com- bination of the processing vessel and the boiler, the vessel being mounted upon the boiler and communicating with the steam drum. Tlie second claim was for the combination of the vessel and the boiler, with the vessel resting upon and partially within the boiler. The third claim was for the combination of the«same elements in connection with a movable lid for the kettle, a clamp to fasten it, a gauge- cock and pipe. Substantially the same processing vessel was shown in a prior patent. The court held that the adaptations claimed were simply the results of mere mechanical skill. Nicodemus et al. v. Frazier, 19 Fed. Rep. 260.— Morris, 1884. 296. " In Atla,ntic Works v. Brady, 107 U. S. 200, the Supreme Court has declared very plainly that it is not the design of the patent laws to grant a monopoly of the improvements and adaptations which, in the progress of manufac- tures, from time to time occur, as the demand for them arises, to any skilled mechanic or oper- ator. ' ' — lb. 297. Complainant's patented improvement in compositors' copy distributers was for a series of copy hooks and a series of galley spaces cor- respondingly lettered. The prior art showed the lettered copy hooks and the galley spaces lettered anew each day. Complainant's im- provement was held not to amount to patentable invention. Brainard v. Eve. Post Association, 22 Blatch. 61.— Shipmah, 1884. 298. Complainant's patent in suit was for lapping two pieces of leather in making the seam of a boot or any other work of the kind, running a line of rivets along and then a line of stitching on each side of the line of rivets, so as to make a compact, tight seam. Complainant had a prior patent showing the same seam, with a strip of india-rubber inserted. It was held that if the prior patent had been the patent of another person, the later patent would be void, but that, under the circumstances, the second patent was in the nature of a claim which might liave been made in the first patent, and was there- fore valid. Cahn v. Wong Town On, 9 Sawyer, 630.— Sawyer, 1884. 299. By the court : " In the case at bar the old contrivance of a railroad truck, with tlie swivelling king-bolt, transverse slot, and pendent divergent links, already in use under railroad cars, is applied in the old way, without any novelty in the mode of applying it, to the anal- ogous purpose of forming the forward truck of a locomotive engine. This application is not a new invention, and therefore not a valid subject 422 INVENTION— INSUFFICIENCY OP. of a patent." Pa. B. B. Co. v. Locomotive Truck Co., 110 U. S. 490.— Sup. Ct. 1884. 300. "The applying of an old process or machine to a similar or analogous subject with no change In the manner of application and no result substantially distinct in its nature will not sustain a patent, even if the new form of re- sult has not before been contemplated." — lb. 301. Where the patented structure [a shoe tip] was precisely like a prior thing, except that the earlier was inside the shoe while the latter was outside, the patented contrivance was held not to amount to an invention. Truss v. Shuter et al., 26 O. G. 1210.— Wallace, 1884. 302. "Merely improving a known structure- by introducing a known equivalent for one of its features" does not amount to invention. Fryer v. Maurer, 32 Blatoh. 100. —Wallace, 1884. 303. Complainant's patented device was a corner iron for a bed frame, and its sole differ- ence from the prior art consisted in making its flange suiiiciently lower tlian the top of the end piece to be out of the way of the attachment of the spring. ".The difference of construction would be so obvious to any competent mechanic as not to amount to a patentable invention." Nat'l Wire Matt. Co. v. N. T. Braided Wire Matt. Co., 20 Fed. Kep. 119.— Wheeler, 1884. 304. Complainants' patented improvement consisted in laying a foundation of broken stone, above that a layer of coarse sand or gravel, then blocks of wood with the fibre vertical, then filling the interstices with sand or gravel. The court took notice, on its own motion, that the broken stone and layer of gravel as a foundation for brick and cobble-stone were old, and found from the specification that the endwise blocks with sand between was old, and said : " The improvement deiscribed in the complainants' patent consists, theiefore, in simply taking a material well known and long used in the mak- ing of pavements — to wit, wooden blocks set ver- tically, and with them constructing a pavement in a method well known and long used. It is plain, therefore, that the improvement described in the patent was within the mental reacli of any one skilled in the art to which the patent re- lates, and did not require invention to devise it, but only the use of ordinary judgment and mechanical skill. It involves merely the skill of the workman and not the genius of the in- ventor. " Phillips et al. v. City of Detroit, 111 U. S. 604.— Sup. Ct. 1884. 305. By the court : " The essential parts of the apparatus used by the patentee were known before; and the same controllable pressure had been applied at various stages of the manufac- ture, and the application at one stage of the con- dition of the beer, instead of another, would seem not to involve anything more than a mere mechanical change, which could be employed by any skilled in the art." New Process Fer- mentation Go. V. Maus et al., 20 Fed. Rep. 725. — Drummond, 1884. 306. Complainant applied to a raw hide full- ing machine a device old and well known in washing machines, and took a patent therefor. The patent was held void on the ground that the improvement was a mere double use of an existing device. Boyer v. Chicago M'fg Co., 20 Fed. Rep. 853.— Drummond, 1884. 307. Where complainant's patented structure is the same as a prior structure, except a slight variation in the form of a recess, there is not suflBcient novelty present to sustain a patent. Fryer v. Maurer, 22 Blatch. 268. — Wallace, 1884. 308. Complainant's patent claimed a hollow- tile flat arch. Hollow tiles were old ; flat arches were old ; flat arches made of hollow tiles in sections were old ; flat arches of sectional hollow tiles with flange joints were old ; such arches supported at the ends by girders and used to support the floors of flre-proof ■ buildings were old ; such arches thus supported were old, when the end sections of the tiling. were provided with a recess to receive the flange of the girder. The substance of the invention was old, except a slight change in the form of the recess in the end sections of the tiling. Complainant's patent was held to be void of substantial novelty. — lb. 309. In complainant's patented monkey wrench there was an adjusting screw, for the movable jaw, lying alongside the wrench-bar and journalled at its lower end in a step-plate which encircled the wrench-bar ; and on the wrench-bar and just under the step-plate there was a nut which relieved the wooden handle underneath the nut from back pressure. The prior art showed this wrench with the exception of said nut. The prior art also showed another kind of wrench with no step-plate and no ad- justing screw alongside the bar, but with a sleeve on the bar exteriorly threaded for adjust- ing the movable jaw, and resting at its lower end upon a nut on the bar above the wooden handle. The court held that complainant had not made a patentable invention. Collins Co. v. Coeset al, 21 Fed. Rep. 38.— Gray, 1884. 310. A patentee applied his improvement to car wheels fixed upon the axles. In the prior art a like improvement had been applied to car- mage wheels, and ,also to loose wheels for cars. INVENTION— mSUFFIOIENCY OP. 433 and complainant's application of the same de- vice to car wlieels lixed upon the axles was held not to amount to invention. Baltimore Oar Wheel Co. v. North Baltinwre Passenger R. S. Co., 31 Fed. Rep. 47.— Morris, 1884. 311. Complainant claimed as his improvement a channel iron for holding the point rails of a railroad frog in place. A similar channel iron had previously been used for holding the wing rails in place, and thereof the court said ; " "When once the utility of the channel iron, as a means for holding the wing rails in their proper relation to each other, was shown, there was no more invention in using it to hold the point in place and strengthen the web of the point rails than thvre was in using a bolt or rivet to fasten these channel irons to the rails, bolts and rivets being old. " Wier v. Morden, 31 Fed. Rep. 243. — Bl-ODGBTT, 1884. ' 312. Complainant's patent was for an im- provement in tools for attaching sheet-metal mouldings ; except in matter of size it was sub- stantially the same thing as was previously used to apply mouldings to carriage dashboards, and was held not to be patentable invention. Peters V. Aetim M'fg Co., 31 Fed. Rep. 319.— Sage, 1884. 313. Complainant's patent was for what is commonly known as "one piece honey -sec- tions. ' ' A prior patent showed a machine for making wooden blanks for box purposes similar to the blanks used for such sections. Thereof the court said : "The invention of such a ma- chine, of course, supposes knowledge of the blanks it was designed to manufacture ; and the transfer of the use of a, box made from such a blank, from the ordinary purposes to the simple and special purpose of a box or frame for a honey-section, is merely a new use of an old and well-known article which involves no inven- tion." Forncrook v. Boot, 31 Fed. Rep. 338. — Matthews, 1884. 314. Complainant's patent was for a ventilat- ing louver, and the claim in issue was practically for certain stiffening flanges upon the gutters, and thereof the court said ; " The flanges to the cutters for stiffening them were merely such ad- ditions as would be supplied by good workman- ship, when needed. They were not new for that purpose. And the use of the flange for at- taching reticulated covering would appear to be very obvious. ' ' Jlayes v. Biokelhoupt, 23 Blatch. 463.— Wheeler, 1884. 315. " The application to the turning of ma- chine awls and needles from metal of mecha- nism old and familiar in the art of wood turning is not invention, and is not patentable." Howe Mach. Co: v. Nat'l Needle Co., 31 Fed. Rep. 630. —Nelson, 1884. 316. The decision of the Supreme Court in the case of the Pa. B. B. Co. v. Locomotive En- gine Safety Truck Co., 110 U. S. 140, makes it impossible to sustain some patents which were sustainable upon views which prevailed previ- ous to that decision. Spill v. Celluloid M'fg Co., 33 Blatch. 441.— Blatchford, 1884. 317. The combination of a cock and a bung, with a certain recess in the cock, existed in the prior art. The patentee located the recess in the bung, with some resulting' convenience ; the change was held not to amount to patentable in- vention. Matthews et al. v. Iron- Glad M'fg Co., 33 Blatch. 437.— Blatchford, 1884. 318. Where a bung for a vessel had its inner face coated with a non-corrosive metal by one method, it is not a isatentable invention to coat it with a non-coiTosive metal by another method, as by soldering. — lb. 319. Complainant's patent was for a mode of soldering the ends of cans by heating the groove in the end of the can and then pouring the solder into the groove. The same thing had previously been done by heating the end of the can and putting it into molten solder. The change was held not to amount to invention. Adams & Westlahe M'fg Co. v. Wilson Packing Co. et al., 31 Fed. Rep. 648.— Blodgett, 1884. 330. Where the prior art shows a compound containing shellac mixed with ' ' argillaceous earth, " to mix shellac with kaolin does not con- stitute a patentable invention. Welling et al. v. Crane et al., 31 Fed. Rep. 707. -Nixon, 1884. 331. Where the new thing in a compound is the ratio of the elements used, a patentable in- vention does not result unless some special and marked benefit comes from the said ratio. And where the patented ratio was ten parts of kaolin to one part of shellac, the patent was held not broad enough to cover so substantial a variation as equal parts of kaolin and shellac. ^ — lb. 333. The patentee's claim was: " Rotating a capstan placed on the deck of a boat, by means of an auxiliary engine, when said capstan and engine are placed forward of tlie steam-boilers of said boat, substantially as hereinbefore de- scribed and for the purposes set forth." Cap- stans and auxiliary engines had been commonly placed forward of the boilers in boats, and an auxiliary engine had been used for rotating the windlass, both the engine and the windlass being forward of the boilers. Thereupon the court said : "It is plain, therefore, that no such in- genuity as merited the issue of _a patent was re- quired for the improvement, but only the ordi- 424 INVENTION— INSUFFICIENCY OF. nary judgment and skill of a trained meclianic. ' ' Morris et al. v. McMillan et al., 112 U. S. 344. —Sup. Ct. 1884. 323. Complainants sued defendant for alleged infringement of a patent for a machine for enamelling or preparing moulds for gilding, the patent being dated in 1880. Complainants showed that they had had (and used subse- quently) the same machine in 1875, the patented machine being somewhat more complex and, possibly, a little more perfect. The court held the difference to be due to mere mechanical skill. Glasgow et al. v. Fritts, 22 Fed. Rep. 391. — Blodgbtt, 1884. 824. Where one takes a tool and adapts it to a new use, and the changes necessary to the adaptation are within the common skill and judgment of a proper workman, no patentable invention is produced by such adaptation. Barry v. Orans Bros. M'f'g Co., 23 Fed. Rep. 396.— Blodgbtt, 1884. 335. Where the prior art showed a scraper remaining constantly in contact with a wheel, except when turned back by a lever, and com- plainant's patented improvement consisted in re- versing this order of things, so that the scraper ceased to act when the pressure was withdrawn from the lever, the change was held not to involve invention. McFarlan v. Derre & Manser M'fg Co. et al., 33 Fed. Rep. 781.— Blodgbtt, 1884. 326. Complainant's patent was for an im- provement in paint cans. The prior art con- tained a dredge-box having the patented con- struction, except that the dredge-box, being in- tended for dry substances, did not have a tight joint, while the patented structure did have, so as to adapt it to hold liquids. The change was held not to involve invention. Norton v. Haight, 33 Fed. Rep. 787.— Gsbsham, 1884. 337. The invention in question was a percola- tor or filter. The prior art showed the material to be filtered put in at the top of the filtering vessel and a diaphragm inserted. In view of this prior art the so-called invention consisted in turning the bottom of the vessel upward, putting in the drug to be filtered, inserting a diaphragm, and then turning the vessel back. This filling of a vessel from the bottom instead of from the top was held not to constitute in- vention. Rosenwasser v. Berry, 22 Fed. Rep. 841.— Colt, 1885. 338. " Not every improvement is invention ; but to entitle a thing to protection it must be the product of some exercise of the inventive facul- ties, and it must involve something more than what is obvious to persons skilled in the art to which it relates." — Jb. 329. Complainant's patented improvement in safes really consisted in cutting an opening in the wedge of an angle-bar to permit the bending of the bar to an angle or curve. This sort of thing in general was shown to be old. The pat- entee showed how, by the use of a pattern of flexible material, he determined the lines of the cuts and the shape of the opening. The court said : " In this there is no exercise of the inven- tive faculty. It is only what would occur to a mechanic of ordinary skill." Mosler Safe & Loch Co. V. Mosler et al., 22 Fed. Rep. 901.— Sage, 1885. 330. "The complainant was the first to em- ploy the combination claimed in the manufac- ture of round-cornered safes, but the change was only a change in form. The combination is nothing more than an aggregation. ' ' — lb. 331. Complainants' patented improvement in axle-arms for vehicles consisted in adding to a "half-patent" axle of the prior art an extra collar, which had before been used for like pur- poses, but which complainants made solid with the axle. The improvement was held to lack patentable invention. Ooodyear et al. v. Hart- ford Spring & Axle Co., 23 Blatch. 159.— Ship- man, 1885. 382. For an example of an improvement in beds held to amount to nothing more than mere mechanical skill, see — . Mellon v. Smith Davis M'fg Co. et al., 28 Fed. Rep. 153.— Tkeat, 1885. 333. The patented improvement was the com- bination of a certain mosaic flooring with a cer- tain soft-wood foundation. The mosaic flooring and the soft-wood foundation, separately con- sidered, were known in the prior art. The mosaic flooring had been laid in sections on single pieces of soft wood, and the specific soft- wood foundation had been used as a foundation for liard-wood veneer. Patented improvement was held to exhibit mechanical skill only. Eappeset al. v. Hartung, 23 Blatch. 152. — Coxe, 1885. 334. Complainant's patented invention in traek-clearers for street-railway cars, was a com- bination of draw-bars, scraper, and diagonal brace. The only element that was claimed to be new in the combination was the diagonal brace. Its use was held to exhibit mechanical skill only. Day v. Fair Haven c6 Westville R. B. Co., 33 Fed. Rep. 189.— Shipman, 1885. 335. Complainant's patented bung and bush- ing were like a prior patented bung and bush-, ing, except that complainant claimed his bung to be of wood, while the prior patent made no statement in that regard. The change, if there INVENTION— INSUFFICIENCY OF. 425 was one, was held to exhibit mechanical skill only. N. T. Bung & Bushing Go. v. Doelger, 23 Fed. Rep. 191.— Coxe, 1885. 336. Complainant's patent was for a device for permitting a horse-car driver to open and close the rear door, a rock- shaft extending from end to end of the car being a chief factor in the combination. Substantially such a rock-shaft had been used for operating a window-shutter from inside the window, and this latter device was held to substantially anticipate the patented device. Steplunson v. Brooklyn Cross Town E. R. Co., 31 O. G. 363.— Snp. Ct. 1885. 837. A patented device consisted in arranging the bell-cord in a horse-oar with dependent pulls along the side of the car instead of in the mid- dle of the car, as formerly ; and the change was held to ihvolve no patentable invention. — lb. 338. " "Where the public has acquired in any way the right to use a machine or device for a particular purpose, it has the right to use it for all the like purposes to which it can be aiDplied, and no one can take out a patent to cover the application of the device to a similar purpose. If there is any qualification of this rule, it is that if a new and different result is attained by a new application of an invention, such new application may be patented as an improvement of the original invention ; but if the result claimed as new is the same in character as the original result, it will not be deemed a new re- sult for that purpose. " Blake v. San Francisco. et al., 113 U.-S. 679.— Sup, Ct. 1885. 339. A patented internal revenue stamp con- sisted of a combination of three parts : [1] a part designed to become a stub when the stamp proper was separated therefrom, and displaying a serial number ; [2] a constituent part of the stamp proper designed for permanent attach, ment to the barrel ; [3] a constituent part of the stamp proper displaying the same identifying serial number as the stub, which part, after the stamp proper had been affixed to the barrel, bore such relation to the permanent part that it could be removed therefrom so as to retain its own in- tegrity, but it mutilated and thereby cancelled the stamp by its removal. The first and second elements were well known, and the third, so far as its contents were identical with those of the stub, was not new. Thereof the court said : " Although we find [it] to be new in this sense, that it had not been anticipated by any previous invention of which it could therefore be declared to be an infringement, yet it is not such an im- provement as is entitled to be regarded in the sense of the patent laws as an invention. " JSol- lister. Collector v. Benedict & Burnham M'fg Co., 113 U. S. 59.— Sup. Ct. 1885. 340. Complainant's patent was for a strength- ening cord in a woven- wire fabric composed of a plural number of coils. In a prior patent for a woven- wire fabric, it was said that a greater number of spirals can be linked together to give greater strength and stiffness to the web. Com- plainant's patented improvement was held to be a matter of'mere mechanical adjustment. Hartford Woven Wire Mattress Co. v. Peerless Wire Mat- tress Co., 33 Blatch. 337. — Shipman, 1885. 341. "The recent decisions of the Supreme Court are emphatic in demanding for a patent- able invention more than the novelty and utility which may be expected to result from the special knowledge and intelligent skill of the mechanic in the branch to which the invention belongs. ' ' —lb. 343. The patent in question was for letters and figures of enamel baked on copper or other metal for signs in windows and other places. Enamelling on copper in this way for other pur- poses was old, and this mode was held to be the product of mere mechanical skill. U. 8. v. Cunning et al., 23 Fed. Rep. 668. — Wheeler, 1885. 343. Complainant's patent was for a certain kind of tap on the sole of a rubber shoe. The same form of tap had been used before, except that it was thinner than complainant's tap. The defendants' was held not to be patentable. Woonsocket Robber Co. v. Candee et al., 23 Fed. Rep. 797.— Wallace, 1885. 344. Biscuit-pans of cast-iron united in clusters by a cast connection being old, there is no in- vention in making such biscuit-pans of sheet- metal and riveting projecting laps together. Lalance & Qrosjean M'fg Co. v. U. 8. Stamp- ing Co., 23 Fed. Rep. 800.— Wallace, 1885. 345. A method of constructing an arch which is old in cultivators cannot be applied to a plough and made patentable. Pattee Plough Co. V. Kingman et al., 23 Fed. Rep. 801.— Tkbat, 1885. 346. To apply to a horizontal engine and boiler devices which are old in the precise com- binations in which they had previously existed, in engines with vertical boilers, is not invention. Scheidler v. Tustin et al., 23 Fed. Rep. 887.— AcHESON, 1885. 347. Complainant's patented improvement pertained to plaques. The court found that the material used and the combination employed were old in panels for decoration ; that mould- ing of similar substance was common, and was accomplished in most instances in the same way 436 INVENTION— INSUFFICIENCY OF. as by complainant. The only thing which seemed to he new was the application of the material to the formation of a plaque, and as this was simply moulding in a particular form, the presence of patentable invention was doubted. Deplanque v. Sipha et al., 24 Fed. Eep. 278. -Butler, 1885. 348. An inventor had taken a patent for a machine applicable to the manufacture of needles. He subsequently took a patent for a needle having the peculiarities which were given by the use of such patented machine. It was held that the latter patent was void. Excelsior Needle Oo. v. Union Needle Co., 33 Blatch. 147. —Wallace, 1885. 349. There is no patentable invention in add- ing a non-conducting jacket to the otherwise old parts of a knife-box. Magi% v. McKay, 32 0. G. 1237.— Blatchpord, 1885. 350. To simply remove the side fastenings from a wire bed fabric is not invention. Ames etal. V. Carltori Spring Bed Oo. et al., 82 O. G. 1238.— Blodgett, 1885. 351. To introduce vertical springs underneath a coiled wire bed fabric, such springs having been used in other bed fabrics, is not invention. The new union constitutes a mere aggregation. —lb. 352. For an example of a patent on stone burial vaults, held to exhibit mere mechanical skill, see — . French v. Carter et al., 25 Fed. Eep. 41.— Shipman, 1885. 353. Complainants' patented improvement was for the use of water upon a saw or other cutting tool in the making of celluloid combs. Water had previously been used in the same way in making articles out of ivory, and also in saw- ing knife-handles of celluloid. The improve- ment was held not to exhibit patentable inven- tion. Celluloid M'fg Go. et al. v. Noyes et al., 25 Fed. Rep. 319.— Colt, 1885. 354. Complainants' claim was : " The de- scribed process of making plug tobacco, which consists in impressing letters, or other marks, directly into the side of the plug, during the process of manufacture, and by the pressure employed in making the plug, substantially as described." In the prior art impressions of letters, flgures, and other marks, had been made by compression upon plastic substances, such as cakes of soap and chocolate, bars of lead, balls of butter, sealing-wax, and the leather covers of books. Complainants' patent held destitute of patentable novelty. Miller et al. v. Force et al., 116 TJ. S. 33. -Sup. Ct. 1885. 355. Complainants' patent was for making plugs of tobacco by indented lines, to serve as guides in cutting up the plug, and also to secure the wrapper to the filling. Bakers had previ- ously made cakes indented in that manner, and a previous patent showed cakes of tea indented in that manner. The patent was held invalid. Drummond et al. v. Venable et al., 26 Fed. Rep. 343. -Blodgett, 1885. 356. Complainants' patent was for a corset. A prior patent described a corset having a gus- set with non-elastic margins, edges or ends, and the only difference between the device of the prior patent and that of complainants' pat- ent was, that in the former an india-rubber spring was used, while in the latter metal spiral springs were used, and they were grouped. The substitution of material was held not to amount to invention, but it was also held that in substituting the spiral for the rubber springs, ' a properly skilled person would naturally group them, and complainants' patent was held in- valid. Florsheim et al. v. Schilling, 26 Fed. Rep. 256.— Blodgett, 1886. 357. When it had been " shown how to make an elastic gusset or section for wearing apparel, with non-elastic margins, there was no invention in applying such a gusset or section to a corset, when corsets had already been made with elastic sections, although these older sections did not have non-elastic margins." — lb. 358. Complainant's improvement for a gate- operating device related to the gates of railway- cars in which the passengers got on or off the sides of the platform, the gates being arranged to close the side entrances to the cars except when passengers were getting on or off. The device consisted in operating mechanism by which the attendant upon the platform of the car, while standing out of the way of the pas- sengers, and in the gates between the two cars, could simultaneously open and close the gates of both cars. The devices for operating the gate were a link connecting a sliding rod with the gate, and a rod sliding in bearings secured to the guard-rail, with a handle located near the passage-way. Similar devices were shown in prior patents for transom-lifters and blind- shutters. The court held that ' ' any competent mechanic, familiar with devices well known in the state of the art, could have done this readily and successfully upon the mere suggestion of the purpose which it was desirable to effect." Aron\. Manhattan Railway Co., 26 Fed. Rep. 314.— Wallace, 1886. 359. "It rarely happens that old instrumen- talities are so perfectly adapted for a use for which they were not originally intended as not to require any alteration or modification. If INVENTION— INSUFFICIENCY OF. 427 these changes involve only the exercise of ordi- nary mechanical skill they do not sanction the patent, and in most of the adjudged cases, where it has been held that the application of old de- vices to a new use was not patentable, there were changes of form, proportion, or organiza- tion of this character which were necessary to accommodate them to, the new occasion. "— lb. 360. Complainant's patent was for an im- provement in type-writers. The prior Reming- ton type-writer had a cover or shield located so as to protect the exposed ends of the key-levers, and the key-levers in that machine were levers of the second order. The present patentee merely changed the location of the cover or shield to meet the different points of exposure in its use, the levers being of the third order. The improvement was held not patentable. Phipp V. Tost, 26 Fed. Rep. 447.— Wallace, 1886. 361. The claims in complainant's patent were : " 1. A blank key-board covered with a continu- ous strip or roll of plastic composition, substan- tially as specified." "2. The within-described process of forming piano or analogous keys, which consists in covering a key-blank with a strip of plastic material and then cutting each key from the coated blank, substantially as specified." The same thing had previously been done in ivory. The improvement was held not patentable. Celluloid M'fg Co. v. Tower, 26 Fed. Rep. 451.— Cakpbntbk, 1885. 363. A process does not become patentable through practising it by machinery instead of by hand. Marcliand v. Emken, 23 Blatch. 435. — CoxE, 1886. 363. In a patent for a fountain-hose-carriage the claim was : " The combined hose-carriage and fountain-standard consisting in the combi- nation of the following elements, viz. : A wheeled carriage, provided with a foot or brace, by means of which it may be sustained in an up- riglit vertical position, a nozzle-liolding device, and a reel of large diameter to allow the water to flow through the hose when partially wound thereon, substantially as described. ' ' This com- bination was old except as to the size of the reel, and was held lacking patentable novelty. Pres- ton-f. Maynardetal., 116 U. S. 661.— Sup. Ct. 1886. 364. Complainant's patent claimed " a scale- dish formed with extended lugs, each having two holes through it, in combination with double suspending bowls passing down through the holes and secured beneath the same, substan- tially as specified." A scale-pan of glass was old. Metallic scale-pans suspended on branch- ing bowls, like those of plaintiff's patent, were old. Complainant's patentee attached his branches to the lugs by the obvious method of putting the branches of the bowl through holes in the edges of the dish, or extensions of the edges. Complainant's device was held destitute of patentable novelty. Forachner v. Baumgarten et al., 35 0. G. 137.— Wheeler, 1886. 365. The claim in complainant's patent for a baling-press, was : " In a press having the bale- chamber smaller than the press-box, bevelling the mouth of the bale-chamber substantially as described." Tlie interposition of this bevel was held to be a matter of mere mechanical skill. Dederick v. Whitman A'g'l Co., 26 Fed. Rep. 755.— Tkeat, 1886. 366. " The mere change of position of known mechanical devices from one part of the bale- cliamber," of a baling press, "to another to effect the same result, involves no patentable invention." — lb. 367. The patent in suit was for a permutation lock, and the devices forming its subject-matter differed from a lock of the prior art only in that tlie rims of the wheels through which the key was introduced were regular, while in the struc- ture of the prior art they were irregular. The change was held to be within the scope of mere mechanical skill. Tale Lock Mfg Co. v. Green- leaf, 117 U. S. 554.— Sup. Ct. 1886. 368. Where it was found that the essence of the invention had been originally communicated to the patentee, his patent was held void. Wat- son V. Belfield, 26 Fed. Rep. 536.— Nixok, 1886. 369. "A change in the size of the machine, making it larger or smaller, while its mode of operation is not changed, is not a patentable change." Montross et al. v. Ballard et al., 27 Fed. Rep. 64.— Blodgett, 1886. 370. The patent under consideration was for baking powder, of which the alleged new in- gredient was alum, dried so thoroughly as to express all the water. It had been previously used when dried to a less degree. The change was held not to constitute invention. Smith et al. v. Murray et al., 27 Fed. Rep. 69. — Blod- gett, 1886. 371. The claim in complainant's patent was : "The combination of an injector for forcing water into a boiler, a second injector communi- cating with the well, and communicating with and supplying water to the first, substantially as described." All that complainant's patentee did was to take the forcer which Gifford had arranged in a direct line with the tubes of his [Gifford 's] lifter, and arrange or set this forcer alongside of the lifter, instead of allowmg it to 428 Invention— INSUFFICIENCY op. extend beyond in the same line, with the lifting pipe, and when thus arranged the forcer of complainant performed the same function that ■was performed by the injector of Gifford after the lifter had set the column of water flowing into and through the tubes, when, the steam- jet being increased, the instrument became from that time a forcer. No new function was per- formed by either instrument, in the change of position, and the change was held destitute of patentable novelty. Hancock Insp. Co. v. Lally, 27 Fed. Kep. 88.— Blodgett, 1886. 372. Complainants' improvement in carriages consisted of a corner-post of a single piece of wood, the outer surface of which was oval or semicircular so as to give rounded corners. Running the whole length of the corner-post, on each edge, was a groove for the reception of the side and end panels. At the top of the post, and extending down some distance parallel with the grooves, were recesses for the end-rails, which rails and the upper ends of the corner- posts were constructed with a narrow elevation projecting above the body of the rail to furnish means for retaining the sides, etc. All of the features of coustiuction separately consid- ered, and various combinations of the elements, were old. The court held that mere mechanical construction was exercised in producing the im- provement. Calkins et al. v. Oshkosli Carriage Co. et al., 27 Fed. Rep. 296.— Dtek, 1886. ' 373. ' ' Novelty and increased utility in an im- provement upon previous devices, do not make it an invention ; and ... a device which dis- plays only the exalted skill of the maker's call- ing, and involves only the exercise of reason upon material, supplied by special knowledge and facility of manipulation resulting from hab- itual intelligent practice, is in no sense a creative work such as the Constitution and the patent laws aim to encourage and reward. ' ' — 1 b. 374. Complainants' patented improvement was claimed " as a new article of manufacture, a chair-seat constructed of veneers of wood with the grains running crosswife of each other, and connected together, all substantially as described and for the purpose specified." Thereof the court said : " The fabric being old, the sugges tion to construct chair-seats out of it being old, the shaping of it in a forrner being old, the per- foration of a seat for perforation and ornamen- tation being old, and the giving of a concave shape to a wooden seat by pressure, being old, there cannot ... be anything patentable in the structure." Gardner et al. v. Serz et al., 118 U. S. 180.— Sup. Ct. 1886. 875. "A patent cannot be taken out for an article old in purpose, and shape, and mode of use, when made for the first time of an existing material, and with accompaniments before ap- plied to such an article, merely because the idea has occurred that it would be a good thing to make the article out of that particular old material." — lb. 376. The idea of bending-in rather than solder- ing the ends, or of closing the ends of the spirals of an oi'namental chain, " was an idea which would naturally suggest itself to the worker in wire, and did not partake of in vention. ' ' Muller v. Ellison et al. , 27 Fed. Rep. 456.— Shipman, 1886. 377. " To make a suspender-end of flat cord in substantially the same way that suspender- ends of round cord had been made, and in sub- stantially the same way in which flat button-ends had been made, for the purpose of fastening or securing other articles of wearing apparel than trousers, is an exercise of the ordinary skill of the housewife or seamstress. The connection of the ends to the attaching piece gives no pat- entable character to the loop." Schenfield v. Nashaioannuck M'fg Co. et al., 23 Blatch. 541. —Shipman, 1886. 378. "It is not enough that a thing shall be new in the sense that the shape or form in which it is produced shall not have been before known, and that it shall bo useful, but . it must, under the Constitution and statutes, amount to an invention or discovery on the part of the person claiming the invention." Adains V. Bellaire Stamping Co. et al., 36 O. G. 537.— Jackson, 1886. 379. " Where the mode of construction of the article claimed, the material employed, the form after construction, and the purpose for which it was to be used had been described separately in earlier patents, although the article itself had never been described in a single patent, and to that extent was novel and new, and of great utility, it did not require invention to produce it, and it was not, therefore, patentable. Im- provements although new and useful are neces- sarily of prima facie inventions ; they may or may not be patentable. The dividing line be- tween improvements which involve invention and those which do not is often difficult, if not impossible, to define with accuracy. Like the colors of the rainbow, it may often be difficult to distinguish the dividing line between them. Still the law makes the distinction." — Ih. 380. Substituting glass or a non-corroding lin- ing in the place of tin, in the cap of a fruit-jar, does not amount to patentable invention. Con- solidated Fruit Jar Co. v. Bellaire Stamping Co. , 28 Fed. Rep. 91.— Sage, 1886. INVENTION— INSUFFICIENCY OF. 439 381. " Where the mode of construction of the article claimed, the material employed, the form after construction, and the purpose for which it was to be used, had been described separately in earlier patents, although the article itself had never been described in any single patent, and to that extent was novel, and was of great utility, it did not require invention to produce it,"— 7 J. 383. A certain class of mangles with differ- ential speed in the rolls being old, and another class without such differential speed being also old, it is not patentable invention to impart differ- ential speed to rolls of the second class. Baldwin V. Haynes, 28 Fed. Rep. 99.— Colt, 1886. 383. Cutters for cutting out crackers, cookies, and cakes of various shapes being old, it is not patentable invention to make a cutter which imitates a hand-made bretzel. Butler et al. v. Steckel et al., 36 O. G. 455.— Blodgett, 1886. 884. Where the state of the art is such that a certain improvement might or would reasonably suggest itself to a workman skilled in that par- ticular business, such improvement is not pat- entable. Adams v. Bellaire Stamping Go. et al. , 86 O. G. 567.— Jackson, 1886. 385. To take a lantern-top, such as exists in one class of lanterns, and secure it to the guard of a lantern by a hinge and catch substantially as lantern-tops had previously been fastened to the guard in another class of lanterns, is not patentable invention. — lb. 386. " The mere change of location of the parts of a mechanism, so long as no different or additional function is performed, does not make the change patentable. Such alteration or modification is not aided by the fact that one of the parts thus transposed performs a double function, if the same device had before been used to perform the same functions separately. ' ' -lb. 387. The substitution of an old hinge and catch for. two old catches involves simply me chanical skill. — lb. 388. A device may be an improvement over a ruder device for the same purpose and yet be only the product of mechanical skill. Orain DHll M'fg Co V. Hart et al., 28 Fed. Bep. 367. —Blodgett, 1886. 389. The patent in suit was for improvements in rotary cutters for trimming the edges of boot and shoe soles. Rotary cutters were old. The shape of complainants' cutter was old in a hand tool. Complainants' patent was held void of patentable novelty. Busell Th'immer Co. et al. V. Stevens et al., 28 Fed. Bep. 575.— Colt, 1886. 390. Complainants' patent in suit was for a fishing apparatus, and the object was to keep fish alive which had been caught in a seine. The apparatus consisted of a pocket attached to a vessel's rail and hung upon two booms which projected from the side of the vessel. These booms were attached to the hull of the vessel so as to move freely in different direc- tions ; there were guys at the outer ends of the booms for lateral adjustment, and they were raised and lowered by means of tackle extend- ing from the masts to their outer ends ; outhauls, connected with the outer corners of the bag, served to raise and lower the outer edge of the bag ; lace-lines were permanently attached to the centre of the head-line, and ran each way through grummets fastened to the head-line. The prior patent showed a net for catching fish attached to the side of the vessel, and stretched out upon two movable booms. In view of this prior art the court found no patentable inven- tion preseijt in the patented improvement. Wil- lard et al. v. Cooper, 28 Fed. Rep. 750.— Colt, 1886. 391. The patent in suit was for a cider-press. A rack on which to place the pomace was old, and a cloth to cover the pomace lying on the rack was old, the two having been used in con- nection, and an enclosure was used with them which enabled the operator to make the pomace of uniform depth on each rack, and prevented a lateral spreading of the pomace. A subsequent improver made the guide-frame smaller than the rack. This was held to require only ordinary mechanical skill and judgment. Clarlc Pomace Holder Co. v. Ferguson, 119 U. S. 335.— Sup. Ct. 1886. 393. As compared with a nail-carrier having a serrated edge, it is not patentable to make the edge smooth in order to facilitate the passage of the nail. Cross et al. v. Union Metallic Fasten- ing Co.et al., 39 Fed. Rep. 293.— Colt, 1886. 393. Removable partitions in an ice-box being old, it is not patentable to make them removable by another old method. Leonard v. Lovell, 39 Fed. Rep. 810.— Sbvekens, 1886. 394. The substitution of a compound lever in order to get an increase of power is not a patent- able improvement. Neither is it patentable to cut an incline into one side of a cog-wheel for the operation of a stop-rod. Puetz v. Branford, 31 Fed. Bep. 458.— Thateb, 1887. 395. For an example of a change from the prior art held not to amount to patentable inven- tion, see — . Woodworth v. Carr, 33 Fed. Rep. 324.— Nelson, 1887. 396. An addition of a non-elastic band or tape to the ribs of a dress-form does not constitute 430 INVENTION— IlSrSUFFICIEJSrCY OF. patentable invention. Morss v. Manchester et al., 32 Fed. Rep. 283.— Benedict, 1887. 397. The patent in suit was for an improve- ment in insulated electric conductors. The im- provement consisted in coating an electric wire with a textile fabric, putting on a coat of paint and while the paint was fresh, putting on an- other coat of textile fabric, thereby producing a non-combustible insulating covering. There had previously existed an electric wire covered with a double coat of thread, each layer being painted, and tlie second layer being put on after the first layer had become dry. In the use of this prior thing the public had substantially the afterward patented article, but probably not the knowledge of its special advantage, to wit, non- combustibility. The patent was held to be antic- ipated. Ansonia Brass & Biibber Co. v. Elec- trical Supply Co., 33 Fed. Rep. 81.— Shipman, 1887. 398. For an example of changes in the con- struction of school-desks and seats, held, in view of the prior art, not to amount to patentable in- vention, see—. Perkins v. Haney Iffg Co., 32 Fed. Rep. 395.— Severens, 1887. 399. The claim of the patent in suit was for a process of stretching mitts lengthwise, and thereby contracting them at the desired point, then subjecting them first to the direct action of steam and next to heat, for the purpose of set- ting tlie fibres to the desired form. Tliis proc- ess was a common one for other things. It was held that the application to mitts did not constitute invention. Jennings et al. v. Lowen- steinet al., 31 Fed. Rep. 84.— Wheeler, 1887. 400. " There must be ' something more than the expected skill of the calling ;' but when we come to determine what that is, or rather what it was at tlie date of the alleged invention — for the standard of that date is the test — we must, if we proceed intelligently, consider what those engaged in that calling were seeking to accom- plish, and what they were by their skill actually accomplishing. That is, after all, a good pi-ac- tical test of what skill can accomplish. It is not always a complete and certain test. Two or more persons, each acting, independently and of his own knowledge alone, may arrive at the same result — undoubtedly invention— at so nearly the same time as to make it difficult to decide who is entitled to priority, as when two or more astronomers almost simultaneously dis- cover a new comet ; and yet, if there were, under such circumstances a score of rival appli- cants for letters-patent, that fact would not negative invention, and the only question is, who first made it ? On the other hand, an im- provement in any department of manufacture or of the useful arts may be made, shortly after the necessity or occasion for it arises, by one person alone. It may be novel and ingenious, and yet, to one familiar to the state of the art, and the handicraft of those engaged in it, it may be clear that skill only, and not invention, is dis- played ; and the fact that no other one had, at or about the same time, produced the same re- sult, by substantially the same, or by any means, would not make it invention. But when for years skill is unsuccessfully reaching out in all directions for a desired result, and finally some one, by a new device or process, which no one else has thought of, accomplishes it, that fact is strongly indicative of invention, and may be conclusive ; for skill had long sought it in vain, and therefore the law may recognize it as a dis- covery, or as the embodiment, novel and useful, of a mental conceptjon, that is, as an inven- tion." Wilcox V. Bookwalter et al., 31 Fed. Rep. 224.— Sage, 1887. 401. Although the hardening and tempering of metals generally is very old and very well known in the past, yet to treat a spiral spring to a spring-temper heat, in order to make the metal homogeneous, is patentable. Cary et al. v. LovellWfg Co., 31 Fed. Rep. 344.— Acheson, 1887. 402. The process last mentioned is patentable, although, in the prior art, and in the manufac' ture of wire-bells for clocks, heat had been ap- plied for the purpose of giving them the desired sound and tone, and although the wire balance- springs for marine clocks had been subjected to heat while coiled in the grooves of a metallic plate for the purpose of permanently settling the coils in proper relations to each other. — Ih. 403. In determining upon the validity of a patent, after a careful consideration of all the anticipating matters presented in the testimony, one must allow full scope for the exercise of judgment upon the part of skilled workmen. Byerly v. Cleveland Linseed Oil Works, 31 Fed. Rep. 73.— Welker, 1887. 404. A conical bung-hole bored partly through a barrel being old, it is not patentable invention to make that bore regularly cylindrical. United States Bung M'f'g Co. v. Independent Bung & Bushing Co., 31 Fed. Rep. 76.— Coxe, 1887. 405. " It is not invention to make a small hole a big hole, or a conical hole a cylindrical hole, especially when no new result and no appreci- able improvement on the old method is accom- plished. It is a mere change of form, involving not the action of the mind, but the substitution Of one tool for another. If such slight and tm- INVENTION— INSUFFICIENCY OF. 431 important changes are sufficient, the next appli- cant has only to make the vent hole elliptical or octagonal, or bore a round hole obliquely, or make it a little larger at the bottom than at the top, and thus secure a patent. The law was never intended to protect such superlative and palpable trivialities. ' ' — lb. 406. A bung- hole bored partly through a barrel being old, it is not patentable invention to bore it partly through from both sides and leave a web in the centre ; neither is it invention to make a circular bore partly through the barrel and leave the core.— /i. 407. To use a tape to strengthen gussets, and give stiffness to the parts, is not invention. Cooke V. Qlohe Mies Co. et al., 40 O. G. 1244.— Wheeler, 1887. 408. The improvement of the patent in suit was : " A link of a sprocket-chain cast with the hook in the form in which it is to be used, with ribs upon the hook portion of the link to strengthen the hook, and a small projection cast upon the end of the hook, which may be bent or turned down so as to prevent the links from separating when turned or thrown into any posi- tion by the use of the chain." The court held that the casting of the ribs on the hooks to make them stronger was not patentable ; also, that to leave a portion so that it could be bent to close the hook was not patentable ; and found the patant destitute of patentable novelty. Ewart M'f'g Co. V. Moline Malleable Iron Co. et al. , 30 Fed. Rep. 871.— Blodgett, 1887. 409. A car-wheel haying a tire dovetailed to its periphery being old, it is not patentable to make a car-wheel having a dovetailed tenon on the periphery taking into the tire. Sax v. Taylor Iron Works, 30 Fed. Rep. 835.— Butleh, 1887. 410. " Utility does not establish invention. Without it, of course, no invention, however ingenious, is patentable. There must be both utility and invention. Great utility may have some bearing on the question of invention. In such case less evidence may establish its exist- ence. Yet great utility sometimes results from changes in mechanical devices which embrace no invention." — lb. 411. Dies for stamping out double 0-shaped corset stays being old, there is no invention in adapting such dies, in shape, to stamping out double H-shaped corset-stays. Henius v. Lublin et al.,ZO Fed. Rep. 838.— Shipman, 1887. 413. The patent in suit was for making flsh- glue from salted flsh-scales. The identical proc- ess had been for many years in use in extract- ing glue from glue-stock other than salted flsh- scales. The application of the process to salted fish-scales was held not to amount to patentable invention. Gloucester Isinglass & Gloucester Co. V. Lepage, 30 Fed. Rep. 370.— Carpenter, 1887. 413. To thicken the base of a post in order to make it stronger is not invention. Cottli v. Krementzet al., 31 Fed. Rep. 43. — Wheeler, 1887. 414. The improvement of the patent in suit consisted in " the combination of a shirt-bosom, bound on the outer edge with a folded and stitched binding, attached to the shirt-body by a separate line of stitching through the binding." Shirts, shirt-bosoms, and bosoms with binding all around their outer edges were not new. Wdollen shirts with bosoms bound and attached on one side alone and on both sides by a line of stitches, either through or just inside the bind- ing, and laundered shirts with ruffled or puffed bound bosoms, were well known. The court found no patentable novelty in the improve- ment. Cluett et al. v. Claflin et al., 30 Fed. Rep. 921.— CoxE, 1887. 415. An alleged improvement is not to be credited with all the improvements and increased facilities which modern machinery and inge- nuity have introduced into the particular traiflc —lb. 416. An old process does not become patent- able by practising it in a larger vessel or on a wider scale. Phillips v. Koclmrt et al., 31 Fed. Rep. 39.— Wheeler, 1887. 417. The patent in suit was for an improve- ment in that class of ladies' cloaks known as ' ' Russian Circulars, ' ' consisting in extending the inner front parts to the back seams, making a close-fitting waist, and leaving the outer parts loose and flowing. Thereof the court said : "If the designer of such cloaks thought that a close-fitting waist in a Russian Circular would bo desirable, the skill of a cloak-maker would readily devise one. The waist, when constructed according to the method of the pat- ent, does not appear to be dilTerent from an ordi- nary close-fitting waist. The tight-fitting ga;r- ment was not new, and the outside part was not new, and the ordinary skill of those practising the art of cloak-making would appear to be ade- quate to putting them together. On much con- sideration, what the patent was granted for ap- pears to fall without the domain of patentable invention." Landesmann v. Jonasson et al., 32 Fed. Rep. 590.— Wheeler, 1887. 418. " The statute authorizing the grant of patents seems to contemplate that the invention for which a patent may be granted must be out- 432 . INVENTION— SUFFICIENCY OF. side of the ordinary sliill of those who practice the art to which the invention belongs." — lb. 419. The patent in suit was for a self-feeding lubricator, and the claims in issue were : " (1) The open or transparent drip-chamber arranged below the reservoir and feed-regulating device, and in combination with the contracted opening through which the oil or lubricating material escapes from the reservoir, substantially as here- in described, to provide for the dripping of said material, and the view of the drip. (3) In com- bination with the drip-chamber and reservoir, the test ffi, substantially as and for the purpose specified." There were in the prior art, gravity lubricators elevated above the bearings to be oiled , and from which the oil dripped in separate drops upon the bearings ; a prior patent, that of Brooks, described a gravity lubricator which had a reservoir at its base, a transparent cham- ber in which was a supply cock for the purpose of regulating the supply ; the oil flowed into a transparent tube and was delivered to the bear- ing or journal to be lubricated, the chamber be- ing for the purpose of enabling the engineer to watch the flow of the oil. The court held that there was no invention in so changing the Brooks supply tube as to make it discharge the oil through an orifice which should deliver a drip, nor in attaching a transparent standard to each cup to keep it free from dirt and wind. McNdb et al. v. Nathan M'fg Co., 131 U. S. 484.— Shipman, 1887. 420. A wire for cutting dough being old, it is not a patentable improvement to cover such a wire and support it centrally of its length. Both et al. V. Eeebler, 30 Fed. Rep. 618. -Butlbb, 1887. 421. " There can be no invention in placing a large register where there had previously been a small one." Filley v. Littlefield Stove Co. et al., 30 Fed. Rep. 434.— Coxb, 1887. 433. The improvement of the patent in suit was a wash-board. All that the inventor had done was to make the wash-board with one plate instead of two, as in the prior art, and solder the *free edge to the lower end, after being bent over a rod to the body of the plate. This was held not to constitute patentable invention. Pfanr Schmidt et al. v. Kelly Mercantile Co., 33 Fed. Rep. 667.— Nelson, 1887. INVENTION— SUFFICIENCY OF. Cases. 1, A nail machine in which one lever effects the cutting-ofE of the [cold] stock, the griping of the blank, and the heading of the nail, is not anticipated by a machine which requires heated stock and different levers to effect the cutting, griping, and heading. Ch-ay et al. v. Jamie» et al., 1 Peters' C. C. 476.— Wash. 1817. 2. Printing with copper plates is a patentable art. Eneass v. Schuylkill Bank, 4 Wash. 9. — Wash. 1830. 3. "If old materials and old principles in me- chanics, or otherwise, are used in a state of com- bination, so as to produce a new result," the product is a patentable invention. Pennock et al. V. Dialogue, 4 Wash. 538.— Wash. 1825. 4. It is clearly immaterial whether the paten- tee's early experiments were made by himself or another. Giving form and substance to an in- vention is not invention. — li. 5. " It' is of no consequence whether the thing be simple or complicated ; whether it be by ac- cident or by long laborious thought, or by an instantaneous flash of the mind, that it is first done." Barley. Sawyer, 4 Mason, 1. — Stort, 1835. 6. Plaintiff introduced a circular saw in the place of an upright saw, in a shingle miU, the other parts remaining mainly unchanged. HeM, to exhibit patentable invention. — Ih. 7. " If, by changing form and proportion, a new effect is produced, there is not simply a change of form and proportion but a change of principle also. ' ' [Said with reference to plough- plates.] DamsY. Palmer, 2 Brock. 398. — Mar- shall, 1837. 8. " The novelty of an invention is either the manufacture produced, or the manner of pro- ducing an old one ; if the patent is for the former it must be for something substantially new, different from what was before known ; if the latter, the mode of operation must be different. " Whitney et al. v. Ermnett et al. , 1 Bond, 303. — HoPKiNSOsf and Baldwin, 1831. 9. The ingredients of a composition may each and all be old and the composition be new and patentable. By an et al. v. Goodwin et al., 3 Sumner, 514.— Story, 1839. 10. " The simplicity of an invention, so far from being an objection to it, may constitute its greatest excellence and value. " The produc- tion of such " is not infrequently the peculiar characteristic of the very highest class of minds." — lb. 11. Plaintiff's patent being for an improve- ment in railroad car-wheels, it was held that a use of substantially the same device in a cotton- mill, or other stationary machinery, did not an- ticipate his invention, but that if, before his in- vention, the same combination was in use in ordinary carriages on common roads, then the INVENTION— SUFFICIENCY OF. 433 patent was void for lack of novelty. Knight v. Baltimore & Ohio M. M. Go., Taney's Dec. 106. —Taney, 1840. 12. "There is no lawwhich requires an in- ventor to put his invention in practice or use be- fore obtaining his patent." Heath y. Hildreth, 1 MacArthur's P. C. 12.— Oranch, 1841. 13. An ice-plough, consisting mainly in differ- ent chisels arranged one behind the other, and each successive chisel making a deeper cut, is not anticipated by a carpenter's plough having a single chisel. Wyeth et al. v. Btone et al., 1 Story, 373 —Story, 1840. 14. Patentable invention may reside in a hori- zontal position of a shaft and the number of water- wheels thereupon. Parker v. Hatfield, 4 McLean, 61. -McLean, 1846. 15. "A novelty in principle may consist in a new and valuable mode of applying an old power, affecting it not merely by a new instru- ment or form of machine, or any mere equiva- lent, but by something giving a new and greater advantage." Honey v. Stevens, 1 AV. & M. 290. — Woodbury, 1846. 16. The claim in a patent for a stove was to " the extension of the oven under the apron or upon the hearth of the stove, and the combina- tion thereof with the flues, constructed as above specified, etc." The new thing was the connec- tion of the oven and the flue, and was held to exhibit patentable invention. Huck et al. v. CHll et al., 4 McLean, 174.— McLean, 1846. 17. When an improvement is a combination " it must bring some new feature into the com- bination, and produce new and beneficial results. And if it does that, it is of no matter how slight is the change. If there is a novelty in the ap- plication and in the machine, and if it produces new and valuable results, it is patentable, whether the combination is new, or an important part only is new. There must be something new in relation to it, and it must produce better results than what were produced before." Adams et al. v. Edwa/rds et al., 1 Fish. P. C. 1. — Woodbury, 1848. 18. ' ' There are instruments invented in which the particular form is a material part of the dis- covery, and then a departure from the form would be a substantial departure, because the form is essential to the invention." Many v. Jaeger et al., 1 Blatch. 372.— Nelson, 1848. 19. " Duplication producing a new and useful result, . . . may be patentable. It is often the material part of the discovery, because It may be that which renders useful what was previ- ously useless. " Parker v. Hulme, 1 West. L. J. 417.— Kane, 1849. 20. " It is of no consequence, as to the validity of a patent, how much or how little labor, study, or thought the invention cost. . . . The degree of labor and thought may be sometimes evidence to the jury, upon the question of inven- tion ; but, although the invention be accidental, or a sudden flash of thought, the party is entitled to the benefit of his discovery." Many v. Sizer et al., 1 Fish. P. C. 17.— Sprague, 1849. 21. A new application of a known mechanical power is, in regard to invention, a new princi- ple. Poote V. Silsbyet al., 1 Blatch. 445. — Nel- son, 1849. 22. Although the knowledge of the expansion and contraction of a metallic rod by heat and cold may be old, the practical application there- of may be patentable. — lb. 23. " Proof of the previous use of a structure bearing some resemblance in some respects to the improvement of the plaintiff, and which might have been suggestive of ideas, or have led to experiments resulting in the discovery and completion of his improvement, will not inval- idate his claim under his patent." Parkers. Stiles, 5 McLean, 44.— Lbavitt, 1849. 24. Where a multiplication of parts in a grind- ing-mill requires for its production something more than mere mechanical skill, patentable in- vention is present. Wilbur v. Beeolier, 2 Blatch. 132.— Nelson, 1850. 25. "Many of the patents or inventions which have been u^jheld are such slight changes from former modes or machines as to be tested in their material diversity chiefly by their better re- sults, such as the flame of gas rather than oil, the hot blast rather than the cold, charcoal used in making sugar, hot water in place of cold in making cloth, etc." Smith v. Downing et al., 1 Fish. P. C. 64.— Woodbury, 1850. 26. " There is no doubt that a person, to be entitled to the character of an inventor, within the meaning of the act of Congress, must him- self have conceived the idea embodied in his improvement. It must be the product of his own mind and genius, and not of another's." " At the same time, it is equally true that, in order to invalidate a patent on the ground that the patentee did not conceive the idea embodied in the improvement, it must appear that the sug- gestions, if any, made to him by others, would furnish all the information necessary to enable him to construct the improvement." Pitts v. Hall, 2 Blatch. 280.— Nelson, 1851. 27. "A formal change, such as a change in proportions, a mere change of form, or a differ- ent shape, is not a change within the meaning of the law. An improvement upon an old con- 434 INVENTION— SUFFICIENCY OP. trivance, in order to be of suiflcient importance to be the subject of a patent, must embody some originality, and something substantial in the change, producing a more useful effect and operation. And in determining this question, tlie jury have a right to take into consideration. in connection with the change, the result which has been produced. Because the result, if greatly more beneficial than it was with the old contrivance, reflects back, and tends to charac- terize, in some degree, the importance of the change." Hall^. Wiles, 2 Blatch. 197.— Nel- son, 1851. 38. Although the principles of the Mor.se tele- graph had previously been known in a certain scientific way, that did not prevent Morse from having a valid patent for his practically success- ful application of those principles of telegraphy. French et al. v. Rogers etal., 1 Fish. P. C. 133. —Kane, 1851. 29. " Novelty and utility in the improvement seem to be all that the statute requires as the condition of the granting of a patent." Mc- Oormiah v. Seymour et al., 3 Blatch. 240. — Nel- son, 1851. 30. If, in all of the attempts made by prior experimenters, however good, they fall short of a successful result, they cannot deprive him "who afterward succeeds of a patent. Ooodyear v. Day, 3 Wall. Jr., 283.— Geibe, 1852. 31. " In order to ascertain and determine whether the change in the arrangement and con- struction of an existing machine is to be consid- ered as a substantial change or not, you must ascertain and determine whether the change is the result of mechanical skill, worked out by mechanical devices— of a knowledge that be- longs to that department of labor — or whether the change is the result of mind, of genius, of invention, in which you discover something more than mere mechanical skill and ingenuity. A change in the arrangement and construction is not substantial, unless you find embodied in it, over and above the skill of the mechanic, that inventive element of the mind which is to be found in every machine or improvement that is the proper subject of a patent." Tatham et al. V. Le Boy et al., 3 Blatch. 474.— Nelson, 1852. 82. If the application of plaster-of-Paris as a filing for saf6s be new and useful, it is the proper subject of a patent. "It is not for the discov- ery of the fact that the gypsum has certain qual- ities not before known, to wit, that it was a non- conductor of heat, but it is for the application of the .substance' possessing such qualities to produce a beneficial result." Rich etal. v. Lip- pineott et al., 3 Fish. P. 0. 1.— Geiee, 1853. 33. " But slight evidence of . . . invention is required when it is shown in what the invention consists, . . . and where proof is given of its practical utility. This is a main and principal test, and this may be shown by the testimony of those who have seen the practical effect or re- sult." FuXtZyinre, 1 MacArthur's P. C. 178. — MOESBLL, 1853. 34. "None of the patent laws have ever re- quired that the invention should be in use or re- duced to actual practice before the issuing of the patent otherwise than by a model, drawings, and a specification containing a written descrip- tion of the invention, and of the manner of mak- ing, constructing, arid using the same, in such full, clear, and exact terms as to enable any per- son skilled in the art to which it appertains to make, construct, and use the same." Seely, S., inre, 1 MacArthur's P. C. 348.— Moesell, 1853. 35. "A mere analogous use is not patentable ; but where a new or useful manufacture is pro- duced by new contrivances, cotobinations, or ar- rangements, a new principle may be constituted, and the application or practice of old things will, of course, be new also in the result. The usual test is whether the production of the article is as good in quality at a cheaper rate, or better in quality at the same rate, or with both these con- sequences partially combined, and so is the like principle in mechanism." Smith, H. L., inre, 1 MacArthur's P. C. 255.— Moesell, 1853. 36. " It is exceedingly difficult to draw a line between what may be regarded by the eye as a small improvement or invention, and one of magnitude ; oftentimes, improvements and dis- coveries the most important in their conse- quences, and in their beneficial effects or; the business interests of the community, are among the simplest ideas of the mind." McCormick V. Seymour etal., 3 Blatch. 209.— Nelson, 1854. 37. If, in a patented improvement, a new and useful result has been attained, neither the sim- plicity of the structure nor the greater or lesser . amount of intellect employed are of importance in determining the validity of the patent. Teese et al. V. Phelps et al., 1 McAllister, 48. — Mo- Allistee, 1855. 38. Casting a knob upon one of the levers of a pair of shears so as to make them cease their closing movement at a proper point is patectable over the prior use of a screw for that purpose. Heinrich v. Luther, 6 McLean, 355. — McLean, 1855. 89. " Before a patent can be issued, the thing patented must appear to be of such a character as to involve or require ' invention' for its pro- duction — require the exercise of the genius of INVENTION— SUFFICIENCY OF. 435 an inventor as contradistinguished from the or- dinary skill of a mechanic in construction." liansom et al. v. N. Y.,1 Fish. P. 0. 252.— Hall, 1856. 40. Although a device more or less similar to the patented device may have previously existed, yet, if the patented device involves changes over the prior device, such as would not be obvious to a mechanic skilled in that art, the invention is patentable. — lb. 41. " Strong resemblances in external appear- ances, similarity of products or operation, are not, separately, tests of the identity of the plan, construction, or purpose of the machines ; nor is the supei'iority in products, or in operation, in one over the other, proof of any essential diifer- ence, because the slightest change of a machine, ■which effects a real improvement in it, may be patentable, while great apparent variations may only be disguises under which an older discov- ery is attempted to be employed and appropri- ated." Oarr v. Bice, 1 Fish. P. C. 198. — Betts, ■ 18.56. 42. " The discovery may be the merest cau- sality. It matters not how the thought is ac- quired, or how brought into action, whether by a sudden conjecture, or some chance experiment, or by the labors and investigations of . . . whole lives, or that it proves pre-eminently serviceable and profitable to the industry and enjoyments of life, or only to a very inconsiderable amount. ' ' —lb. 43. " A tube that is perforated through its whole length for the purpose of producing a simultaneous explosion of the whole charge, and for expanding the bullet and pressing it laterally into the rifled grooves of the barrel, is, beyond all doubt, a different device, a different means, and for a different purpose from that of ... a priming tube, for the purpose of igniting the charge at the forward end only, producing a pressure upon the bullet in the direction of the axis of the barrel only," The latter is patent- able over the former. Salsey, J. A., in re, 1 MacArthur's P. C. 459.— Moksell, 1856. 44. The inventor " is not the man who may form an imperfect machine, which may suggest to a higher and more practical order of mind valuable ideas ; but it is the one who embodies those ideas in a practical working form whom the law protects." Pitts v. Edmonds et al., 1 Bissell, U. S. C. 168.— McLean, 1857. 45. If a combination " was a new and useful combination within the meaning of the patent law, it was the subject-matter of a patent, and it is not important whether it required ipuch or little thought, study, or experiment to make it, or whether it cost much or little time or expense to devise and execute it." Purbush et al. v. Oook et al., 10 Mo. 'L. R. 664.— Cdbtis, 1857. 46. By the court : ' ' An invention in the sense of the patent law, as I understand it, means the finding out, the contriving, the creating [and I speak now in respect to a machine, or an improvement upon a machine] of something which did not exist, and was not known before, and which can be made useful and advantageous in the pursuits of life, or which can add to the enjoyment of mankind." Conmer y. Roach et al., 4 Pish. P. C. 12.— Hall, 1857. 47. "A patent may be granted for an improve- ment upon an existing organization, that exist- ing organization being capable of performing certain functions, or producing certain results only, if that improvement, in addition, enables the machine to accomplish additional and differ- ent purposes." — lb. 48. " Whenever the change and its conse- quences, taken together and viewed as a sum, are considerable, there must be a sufficiency of invention to support a, patent." Walsh, J. 0., in re, 1 MacArthur's P. C. 530,— Morsbll, 1857. ,49. New and useful applications ,of old parts are patentable. Cole, li. II. , in re, 1 MacAr- thur's P. C. 539.— Merrick, 1857. 50. An improvement is not anticipated by a prior structure where the result was reached only incidentally and without intent. Ilebbard, Alonzo, in re, 1 MacArthur's P. 0. 543. — MoR- SELL, 1857. 51. " The validity of the grant is not to be determined by the amount of invention that was required. If the device is new ; if it is useful ; if it had not been known before, there is a suffi- cient amount of invention to authorize a patent. ' ' Potter et al. v. Holland, 4 Blatch. 238.— Ingeh- SOLL, 1858. 52. " It is no evidence of such a prior knowl- edge of the invention as will defeat the patent, that other persons have made suggestions to the patentee as to the possibility of making the im- provement subsequently patented. Others may have thought upon the subject, and made experi- ments with reference to it ; but unless they ac- complished the object, unless their experiments resulted in. discovery, such approaches to it would be no liar to the granting of a patent to the one who was successful in making the dis- covery and perfecting it." Bell v. Daniels et al., 1 Bond, 212.— Leavitt, 1858. 53. " It is a safe source of. testimony, which can be relied upon with some degree of certainty, in order to ascertain whether the same means 436 INVENTION— SUFEICIBNCY OF, are used, to look at the result produced by the means used. Like means, provided the machine is in perfect order, will, in a measure, produce like results. And if like results cannot be pro- duced by two separate devices, it is good evi- dence for the jury to consider in coming to con- clusion as to whether like means were used ; be- cause, as a general rule, like results are produced by like means ; and if like results are not pro- duced by two separate devices, it is fair for the jury to infer that tlie means may not be alike in kind or character." Waterbury Brass Co. v. N.Y.& Brooklyn Brass Co., '6 Fish. P. C. 43.— Ingeksoll, 1858. 54. There are cases where defence of lack of novelty is set up, wherein " the defence amounts to no more than this — that the persons who made these supposed originals came so near the patented device or machine, that they might have discovered it if they had only thought of it, or could have anticipated that, at some future day, it could be converted to some useful, prac- tical purpose, for simplifying, cheapening, and improving an important article of our manufac- i ture. It is only when some person, by labor and perseverance, has been successful in perfect- ing some valuable manufacture, by ingenious improvements and labor-saving devices, that their patents are sought to be annulled by dig- ging up some useless, rusty, forgotten contriv- ance of unsuccessful experimenters." Adams V. Jones et al., 1 Fish. P. C. 527.— Geibr, 1859. 55. Complainants' patented invention was a double-faced lock, usable for a right or left-hand door. The prior art contained locks which, by slight changes, might have been used in this way, but they never were so used, and the pat- ent was sustained. Livingston et al. v. Jones et al., 1 Fish. P. C. 531.— Grier, 1859. 56. Although a person with the whole prior art before him might be supposed to find it easy to make the patented improvement, that fact does not militate against the presence of patent- able invention. Stainthorp et al. v. Humiston, 1 Fish. P. C. 475.— Ha^ll, 1859. 57. A machine for broadcasting seed in hori- zontal planes is not anticipatory of a machine sowing seed in vertical planes, and needing change and modifications to adapt it to sowing seed in horizontal planes. Cahoon et al. v. Ring, 1 Cliff. 592.— Clifford, 1859. 58. That change in a cotton-gin which con- sists in bringing the metallic rings from which the teeth are cut so near together that burrs or cotton-seeds cannot fall into the channels be- tween them, constitutes a patentable improve- ment. Whipple V. Middlesex Co., 4 Fish. P. C. 41.— Sprague, 1859. 59. A cotton-gin of the prior art had card- teeth made of round wire stuck in leather. The teeth of the patent were cut in plates of metal fastened upon the cylinder in such a manner as to be both firm and sharp. This improvement was held patentable. — lb. 60. Tl^e patented improvement being in the teeth of a cotton-gin, one prior structure showed the same form of teeth, and another prior struc- ture showed the same surface or arrangement. The patentee's union of the two was held to be invention. — lb. 61. "A new machine, which accomplishes the same end as a former, but by substantially different means, is patentable. " JEamesv. Cook, 2 Pish. P. C. 146.— Sprague, 1860. 63. By the court : " In order to constitute a man an inventor, it is generally necessary that he must have exercised some inventive faculty of his own. I say generally necessary, because there might, no doubt, be cases in which an in- vention might bo the result of pure accident. But the fact that he has received some ideas, hints, or suggestions on the subject from others would not prevent him from being considered an inventor, and entitled to a patent as such. To have that effect, it must appear that the in- vention was substantially communicated to him by some other person, so that, without the ex- ercise of any inventive power of his own, he could have applied it in practice. Though others may previously have had similar ideas, and may have experimented upon them, the person who first perfected the idea and made it capable of practical use is the inventor, and entitled to a patent." Mattliewsy. Skates etal., 1 Fish. P. C. 602.— Jones, 1860. 63. " When it is said that an old machine ex- isted applicable to a new use ; if this want never existed before, we may readily believe that an old instrumentality may meet it ; but when the want has always existed, and not only existed but been pressing, and it is said that an old in- strument would always have answered the want, the improbability is so great as to require strong evidence to overcome il . " Howe v. Morton et al. , 13 Mo. Law Rep. 70.— Spragcb, 1860. 64. " Mere conversations about the practica- bility of an improvement, or suggestions as to the manner in which it might be carried out or accom- plished, will not of themselves defeat the claims to originality of him who perfects the idea and secures a patent. Neither will experiments de- feat, even if known to the patentee, if it appear that he prosecuted such experiments to final INVENTION— SUFFICIENCY OF. 437 success ; but any information to a patentee, sufficient to enable him to construct the tiling it- self, would destroy the originality of the inven- tion. But that knowledge must be definite and tangible ; it should be sufficient of itself to en- able the party to whom it was imparted to con- struct the improvement. ' ' Judson v. Moore et al., 1 Bond, 285.— Leavitt, 186.0. 65. " The mere use of a mechanical structure for a certain purpose is not of itself patentable, but if the new use required a different structure, producing a new and useful result, it is a patent- able subject." — lb. 66. " Invention or discovery is required as the proper foundation of a patent, and, whei-e both are wanting, the applicant cannot legally secure the privilege. Consequently, where the claim rests merely upon the application of an old ma- chine to a new use or result, the patent cannot be sustained." "Particular changes, however, may be made in the construction and operation of an old machine so as to adapt it to a new and valuable use not known before, and to which the old machine had not and could not be ap- plied without those changes and under these cir- cumstances and. conditions ; if the machine as changed and modified produces a new and use- ful result, it maybe patented." " Such change in an old machine may consist alone of a new and useful combination of the several parts of which it is composed, or it may consist of a ma- terial alteration or modification of one or more of the several devices which enter into its con- struction, or it may consist in adding new de- vices ; and whether it be one or another of the suggested modifications, if the change of con- struction and operation actually adapt the ma- chine to a new and valuable use, not known before, and to which the machine had not been applied, and, without the change suggested, was not in any degree fitted to be applied, and actu- ally produces a new and useful result, then the case falls within the rule already laid down, and a patent may be granted for the same and be up- held." Bray v. Hartshorn, 1 Cliff. 538.— Clif- ford, 1860. 67. Complainant's patented invention consist- ed " in a process for the manufacture of fat acids and glycerine, by the action of water, in a liquid state, above the ordinary boiling point of water, and, consequently, under pressure, on fatty bodies or substances. ' ' Tilghman v. Werk, 1 Bond, 511.— Leavitt, 1863. 08. When old devices are set up as anticipat- ing a patent, the question may well be asked why the old contrivances were never in any con- siderable use. Clark Patent Steam <& Fire Reg- ulator Oo. V. Copeland, 3 Fish. P. C. 221.— Ship- man, 1863. 69. " Old instruments, XDlaced in a new and different organization, producing in such new organization different results, or the same re- sults by a new and different mode of operation, do not prevent such newly-organized mechanism from being patentable." — lb. 70. " With regard to the degree of mental labor and inventive skill required in the work of invention, the law has no nice or rigid standard. There must be some inventive skill exercised, but the degree of the skill is not material. It not infrequently happens, in the progress of the mechanic arts, that the time arrives when the whole atmosphere of inventive thought is quick- ened with the life of an approaching discovery ; that many lines of investigation and experiment converging for a long time toward that point almost, but not quite, reach it ; when, at last, some mind, by a happy thought, supplies some new element, or instrument, or mode of organ- ization, and instantly gives birth to the organized idea." — lb. 71. " If " the "inventor . . . has . . sup- plied to what was old some new element, iastru- ment, or new organization, and thus produced a better practical result than had been included by the old means, he is entitled to the merit and fruits of his labor." — lb. 73. " Original and first inventors are entitled to the benefits of their inventions if they reduce them to practice, and seasonably comply with the requirements of the patent law in procuring let- ters-patent for th3 protection of their exclusive rights. While the suggested improvement, how- ever, rests merely in the mind of the originator of the idea, the invention is not completed within the meaning of the patent law, nor are crude and imperfect experiments sufficient to confer a right to a patent ; but in order to constitute an invention, in the sense in which that word is employed in the patent act, the party alleged to have produced it must have proceeded so far as to have reduced his idea to practice, and embod- ied it in some distinct form." White et al. v. AlUn, 2 Cliff. 234.— Clifford, 1863. 73. A patentable invention may be " a simple but happy conception, which, when reduced to practice, produced surprising results both in the quality of the article manufactured and in the rapidity with which it was turned out. A sub- ject matter to be patentable must require inven- tion, but is not necessarily the result of long and painful study, or embodied alone in complex mechanism. A single flash of thought may re- veal to the mind of the inventor the new idea, 438 INVENTION— SUFFICIENCY OF. and a frail and simple contrivance may embody it. Some inventions are the result of long and weary years of study and labor, pursued in the face of abortive experiments and baffled attempts, and finally reached after the severest struggles, while others are the fruit of a single happy thought." Magic Ruffle Go. v. Douglas et al., 3 Fish. P. C. 330.— Shipman, 1863. 74. " Upon the question of identity of ma- chines or of mechanical devices, whenever that question arises in a patent case, the mode of operation and the result produced are impor- tant considerations ; and if the modes of opera- tion and the results produced are both clear- ly and substantially different, when the ma- terial or substance brought under their operation is the same, the question of identity must ordi- narily, at least, be determined in the negative ; and this is generally true, whether the invention patented is an organized machine or an im- provement on an existing machine ; whether the patent is for a machine or a mechanical devicp, new in all its parts, or merely fop a combination of two or mor^ well-known existing machines or mechanical devices." Staintliorp et al. v. Hamiston, 4 Fish. P. C. 107.— Hall, 1864. 75. Complainants' invention, as expressed in the claim of their patent, was ; ' ' What I claim as my invention, and desire to have secured to me by letters-patent, is constructing a metallic burial-case with the ogee-shaped ends as de- scribed, whereby great reduction in weight and economy is secured, and at the same time all the space required afforded." Old Egyptian mum- my cases 'composed of wood, with the parting line much like that of a coffin, were held not to anticipate this patent. Forbes et al. v. Berstow Stove Co., 2 Cliff. 379.— Clifford, 1864. 76. In determining upon patentable novelty a jury " are not to determine about similarities or differences merely by the names of things, but are to look to the machines, or their several de- vices or elements, in the light of what they do, or what offices or function they perform, and how they perform it, and to find that a thing is substantially the same as the other if it performs substantially the same function or olEce in sub- stantially the same way to obtain the same result, and that things are not substantially different when they perform different duties, or in sub- stantially a different way, or produce a different result." Union Sugar Refinery v. Matthiessen, 2 Fish. P. C. 600.— Clipfoed, 1865. 77. If a person combines old parts in a new way " so that he gets a machine which operates differently and produces a different result in kind, then the law presumes that he has some- thing that is patentable." Woodman y. Stimp- son, 8 Fish. P. C. 98.— Lowell, 1866. 78. " The principle of law is, that he is the original and first inventor of a machine, or com- bination, or whatever it is, if it was not known or used by others before his discovery or inven- tion ; the man who has made an invention that was not known before he made it. That does not mean that he has got his machine into the complete state in which you find it in the patent. Neither does it mean the first moment at which he conceived the Mea that it would be a good thing to do that. It means not only when he conceived that such a thing would be a desirable thing to do, but when he had conceived the idea of ho w to do it substantially as he has done it. " —lb. 79. If a party is the first to combine old parts, and it was beyond the ordinary knowledge and skill of the mechanic to make the combination, then there is patentable invention exercised. —lb. 80. "A new combination of old parts is pat- entable If the essential parts which go to make up a combination or arrangement of machinery have never been combined before, it is no matter that they existed separately in other machines, if by their combination a new and useful result is produced, or even an old result, in a better manner." — lb. 81. Complainants' patent in suit was for a sewing-machine feed. The ' ' Maynard Primer, ' ' a prior structure, contained a similar device, but complainants' patent was "sustained. Potter et al. V. Whitney, 1 Lowell, 87. — Lowell, 1866. 82. Complainants' patent was for a machine for repairing railway rails. A prior bayonet machine and a prior angle-iron machine were very much like it, but could not, without change and adaptation, perform successfully the work of the patented machine. The court sustained the patent, saying: "A slight change some- times of a known machine, or in some of its parts, will effect surprising results, and to pro- tect a party who, b}'^ inventing such a change, has produced a new and useful result, was cer- tainly one of the objects of the patent laws." Turrillet al. v. III. Cent. R. R. Co., 3 Bissell, 66.— Dhummond, 1867. 83. The adaptation of tumblers which in a general sense were old in a key-lock, for use in a keyless lock, the inventor being a pioneer in that matter, involves patentable invention. Tale & Oreenleaf M'fg Co. et al. v. North, 5 Blatch. 455.— Shipman, 1867. 84. " Originality is the lest of Invention. If that is successfully exercised its product is pro- tected, and it is immaterial whether it is dis- INVENTION— SUFFICIENCY OF. 439 played in a greater or less degree, or whether the new idea revealed itself to the inventor by a sud- den tlash of thought or slowly dawned on his mind after groping his way through many aind dubious experiments. It is needless to remark that originality may be found as well in new combinations of old elements as in the produc- tion of new ones." Blake v. Stafford, 6 Blatch. 195.— Shipman, 1867. 85. Although the annealing of metals gener- ally was well known, to anneal a car wheel for the purpose of avoiding strains in the metal was held patentable. Whitney v. Mowry, 2 Bond, 45. — Lbavttt, 1867. 86. The patent in suit was for a snap-hook. Kespondents contended that the described trans- position of the spring, in connection with the simple device of the sockets for holding it in place, was merely a colorable change of the old snap-hook. But that change affected palpable and useful results, and the patent was sustained. Middletown Tool Co. v. Judd etal., 3 Fish. P. C. 141.— Shipman, 1867. 87. " Whenever a change or device is new and accomplishes beneticial results, courts look with favor upon it. The law, in such cases, has no nice standard by which to gauge the degree of mental power or inventive genius brought into play in originating the new device. " A lucky casual thought, involving a compar- atively trifling change, often produces decided and useful results ; and though it be the fruit of a very small amount of inventive skill, the pat- ent law extends to it the same protection as if it had been brought forth after a lifetime devoted to the profoundest thought and most ingenious experiment to attain it. "— /S. 88. " Caustic alkali, enclosed in an integu- ment or casing of anti-corrosive impervious fabric," constitutes a patentable invention. Pcnn. Salt M'fg Co. v. Ougenlieim et al., 3 Fish. P. C. 433.— Gribr, 1868. 89. It seems that ' ' bringing the different por- tions of a single plate or several smaller plates successively into the field of the lens of the camera" is a patentable invention over using a separate plate for each impression. Ormsbee v. Wood, 3 Fish. P. C. 373. -Blatchfokd, 1868. 90. It seems that forming the crown of a bon- net frame by dies at one operation is patentable over forming the same in parts separately by dies. Boubleday et al. v. Sherman et al , 3 Fish. P. C. 369.— Blatchpord, 1868. 91. " It appears impossible to consider that to be a new material, patentable as a new product, which is simply a substance long well known to exist in wood and other substances left in a state ' nearly pure,' and consequently fit for the man- ufacture of paper on being bleached by the re- moval from it of the intercellulose with which it is found to be combined in wood." Am. Wood Paper Co. v. Mbre Disintegrating Co., 6 Blatch. 27.— Benedict, 1868. 92. "Where a person has discovered an im- proved principle in a machine, manufacture, or composition of matter, and employs other per- sons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discov- eries ancillary to the plan and preconceived de- sign of the employer, such suggested improve- ments are in general to be regarded as the prop- erty of the party who discovered the improved principle, and may be embodied in his patent as a part of his invention. " Suggestions from another, made during the progress of such experiments, in order that they may be sufficient to defeat a patent subsequently issued must have embraced the plan of the im- provement, and must have furnished such in formation to the person to v/hom the communi- cation was made that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to con- struct and put the improvement in successful operation. " Persons employed, as much as employers, are entitled to their own independent inventions ; but where the employer has conceived the plan of an invention, and is engaged in experiments to perfect it, no suggestions from an employe not amounting to a new method or arrangement, which, in itself, is a complete invention, is sutfl- cient to deprive the em'ployer of the exclusive property in the perfected improvement, But where the suggestions go to make up a complete and perfected machine, embracing the substance of all that is embodied in the patent subsequently issued to the party to whom the suggestions were made, the patent is invalid, because the real invention or discovery belonged to another." Agawam Co. v. Jordan, 7 Wall. 583. — Clifford, 1868. 93. The claim in complainant's patent was : " The new article of manufacture,, consisting of a turned-down or folded enamelled paper collar, substantially as described." Enamelled paper was old, but it required a particular kind of paper whereof to make the collar, and the pat- ent was sustained. Hoffmann. Stiefel et al., 7 Blatch. 58.— Blatohford, 1869. 94. " Invention is the work of the brain and not of the hands ; if the conception be practically complete, the artisan who gives it reflex and em- 440 INVENTION— SUFFICIENCY OF. bodiment in a machine is no more the inventor than the tools with which he wrought. Both are instruments in the hands of him who sets them in motion and prescribes the work to be done. Mere mechanical skill can never rise to the sphere of invention. The latter involves higher thought, and brings into activity a differ- ent faculty: Their domains are distinct. The line which separates them is sometimes difficult to trace ; nevertheless, in the eye of the law, it always subsists. The mechanic may greatly aid the inventor, but he cannot usurp his place. As long as the root of the original conception remains in completeness, the outgrowth — what- ever shape it may take — belongs to him with whom the conception originated. " Blandy et al. V. ariffith et al., 3 Fish. P. C. 609.— Swatnb, 1869. 95. Complainants' improvement in portable engines was a bed-plate for an engine of a single continuous shell or tube. Somewhat similar prior beds had been used composed of different parts. Complainants' engine was attached to the outer side of the bed-plate, while in those of the prior art the attachment was either upon or over the boiler. Complainants' patent was sus- tained. — lb. 96. Complainants' patent was for a whip hav- ing a handle or any other portion covered with a knit fabric. Tubular knit fabrics were old, and the idea of covering a whip-handle was old. The patent was sustained. Strong et al. v. Noble et al., 6 Blatch. 477.— Blatchford, 1869. '97. " There is scarcely a patent granted that does not involve the application of an old thing to a new use, and that does not, in one sense, fail to involve something more. But the merit consists in being the first to make the applica- tion, and the first to show how it can be made, and the first to show that there is utility in mak- ing it." — lb. 98. The claim in complainant's patent for a new and useful "means for rendering joints steam tight" was : " ' I claim the method de- scribed of causing steam to become a packing to itself in steam cylinders or other parts of steam machinery, by allowing the steam to act in one or more grooves, substantially as specified.' " The grooves were old, and had been "used for a substantially similar purpose in air-blowing en- gines. The court held this to be a claim for an art or process, and sustained the patent. Poil- lon v. Schmidt, 6 Blatch. 399. — Blatchford, 1869. 99. " Similarities in construction are usually found in inventions relating to the same subject, ;and they may comprehend every device but one in the machine, and yet the second improvement may be of great value. " Howes v. Nute, 4 Cliff. 173.— Clifford, 1870. 100. The claim in complainants' patent was : " ' The plate of hard rubber or vulcanite, or its equivalent, for holding artificial teeth, or teeth and gums, substantially as described.'" The court construed this to be a claim including not only the plate of hard rubber for holding artifi- cial teeth, or teeth and gums, but the process or mode by which they are constructed. Vulcanite was then old, but the patent was sustained. Ooodyear Dental Vulcanite Co. et al. v. Gard- ner, 3 Cliff. 408.— Clifford, 1870. 101. "Doubtless change of form of the con- stituents of a combination is often no substantial change. It may be only the substitution of an equivalent. The combination remains the same, though the form of the things combined greatly varies. But there are cases in which a change of form destroys the combination. They are those in which form is necessary to secure the beneficial result, and when, of course, a change of form of one or more of the things combined works a different result." Am. Nicliolson Pave- ment Co. v. City of Elizabeth et al., 4 Fish. P. C. 189.— Strong, 1870. 103. If an inventor " had discovered the prac- tical mode and contrived the practical means of accomplishing the result he might be entitled to a patent for his new and useful art, although ignorant of the philosophical or abstract prin- ciple which was involved in the exercise of the art itself." Piper v. Brown et al., 1 Holmes, 30.— Shbplbt, 1870. 103. " Changing one of the elements of a combination that will not produce a desired effect, and substituting another that makes it effective, is to produce a new and patentable combination ; and even if the elements are un- changed, yet if, with one arrangement they are incompetent to an end for which a different ar- rangement makes them competent, such new arrangement becomes patentable, unless it is Such as would naturally suggest itself to a per- son skilled in the art to which the subject makes it akin." Woodward v. Dimmore, 4 Fish. P. C. 163.— Giles, 1870. 104. "Invention generally [as distinguished from discovery] consists in new modes of em- ploying what was before known, so as to pro- duce thereby effects either not produced before, or not produced in that manner, or not produced so usefully." Hailes et al. v. Van Warmer et al., 7 Blatch. 443.— Woodruff, 1870. 105. It seems that making, by dies operated by machinery, a staple which was old as a mat- INVENTIOJST— SUFFICIENCY OF. 441 ter of hand manufacture, is patentable inven- tion. Rogers et al. v. Sargent et al.,7 Blatch. 507.— Blatchpord, 1870. 106. " Although a griping-pawl operated by hand in an engraving machine is old, it is pat- entable to operate the same by machinery and automatically." Singer et al. v. Braunsdorf et al., 7 Blatch. 521.— Blatchford, 1870. 107. " Particular changes may be made in the construction and operation of an old macliine so as to adapt it to a new and valuable use not known before, and to which the old machine had not been and could not be applied without those changes ; and, under those circumstances, if the machine, as changed and modified, pro- duces a new and useful result, it may be patent- ed, and the patent will be upheld under existing laws." Seymour v. Osborn, 11 "Wall. 516. — Sup. Ct. 1870. 108. "In the fossils of geology, belonging to certain classes of animals, regular graduations from a low form of organism to a much higher one are found to exist. The contrast between the highest and the lowest is very striking. The same thing takes place in the progress of inven- tions. Models and machines in the same series, upon inspection not unfrequently exhibit curi- ous points of analogy to such fossils. Some- times one will be found to reach almost the highest point afterward attained, but to fall short of it." Wood et al. v. Cleveland Hailing Mill Go., 4 Fish. P. C. 550.— Swaynb, 1871. 109. " There are many cases in which the materiality of an invention, whether it be a ma- chine or process, can be judged of only by its effect on the result, and this effect is tested by the actual improvement in the process of pro- ducing an article, or in the article itself intro- duced by the alleged invention." Baberts v. Biekey, 4 Brews. 360.— Stkong, 1871. 110. The method of increasing the flow of oil wells by exploding a torpedo therein is patent- able over the practice of such a thing, in wells, for other purposes. — Ih. 111. A distinguishing feature of complainants' improvements in fruit jars was that they obtained an exclusive circumferential pressure of the cover upon the jar. Prior fruit jars had ap- proximate devices, but none attained this pecu- liarity, and complainants' patent was sustained. Watmn et al. v. Cunningliam et al., 4 Fish. P. C. 528.— McKennan, 1871. 112. Complianant's improvement was : " A metallic can for hermetically sealing paints and other substances, and having attached thereto a rim or ring of thin brass or other soft metal in such a manner that the top or cover may be re- moved by severing the said rim or ring of thin brass or other soft metal with a penknife or other sharp instrument.'' Defendant showed that he had, prior to complainant's invention,. made a can having a hole in the middle of its top, cov- ered by a thin brass cap, which brass cap could be easily removed by inserting a knife under its edge and prying it up, or by severing it. Com- plainant's patent was sustained. Masury v. Tieman, 8 Blatch. 426.— Blatchford, 1871. 113. Complainant's patented process for puri- fying coal oil, etc., consisted essentially in filter- ing the coal oil through bone-black. In the I prior art animal charcoal had been used to ren- ! der filthy water inodorous ; rancid oil had been , deprived of smell and taste by repeated filtration j through such charcoal, and the yellowish tint of olive oil had been removed by mixing with animal charcoal, and subsequent filtration. The patent was sustained. National Filtering Oil Co. V. Arctic Oil Co., 8 Blatch. 416.— Blatch- ford, 1871. 114. Uniting deflecting plates upon both sides of a saw, with the prior art showing such plate upon one side of the saw only, is patentable.' Myers et al. v. Fi'ame et al., 8 Blatch. 446. — Blatchford, 1871. 115. The claim in plaintifE's patent for im- provement in bridges was : "'2. The construc- tion and arrangement of the arched or curved stay-plates or channel-irons in combination with arched bridges, for the purpose specified.'" Thereof the court said : " The channel-iron of the King bridge presents in a single piece of metal what had been before accomplished, if at i all, only by the union of several distinct pieces. I or parts, whicli were attached with great addi- tional expenditure of matei'ial and labor, and consequent cost. It dispenses with angle irons and numerous rivets, and in one solid, firm con- struction, complete in itself, furnishes this es- sential feature of an iron arch bridge. It cer- tainly cannot be the doctrine of the patent law that an invention apparently so valuable for its simplicity and increased economy should be ante- dated by more complex and expensive combina- tions, which do not contain the essential feature of the King invention." Kingy. Hammond et al, 4 Fish. P. C. 488.— Sherman, 1871. 116. Defective turn-down enamelled paper collars were old. Complainant's inventor pro- duced a successful article by improving both the paper and the enamel. The patent was sus- tained. Hoffman v. Aronson et al., 8 Blatch. 324.— Blatchford, 1871. 117. The invention of complainant's patentee —the same being a door-bolt— consisted in mak- 442 INVENTION- SUFFICIENCY OF. ing the barrel in whicli the bolt slides of one piece of sheet metal, with prongs passing through holes in the plate, by which it was riveted to the plate itself. The prior art contained a device in which a short barrel and a long barrel were se- cured to the plate in the same way. The court found patentable novelty in complainant's pat- ent. Stanley Works v. Sargent & Co., 8 Blatch. 344.— Shipman, 1871. 118. " Utility is not an infallible test of orig- inality. The patent law requires a thing to be new as well as useful in order to entitle it to the protection of the statute. To be new in the sense of the act it must be the product of origi- nal thought or inventive skill, and not a mere formal and mechanical change of what was old and well known. But the effect produced by a change is often an appropriate though not a controlling consideration in determining the character of the change itself." — 11. 119. To substitute india-rubber in the place of cloth, as a covering for wringer-rolls, is impor- tant, and valuable enough to be patentable. Bailey Washing & Wringing Macli. Co. v. Lin- cola 6t al., 4 Fish. P. C. 379.— Lowell, 1871. 120. Complainant's patent was for a clamp to be used in making hoop-skirts. A prior patent showed such a clamp, but not with its teeth clinched as in the patent. Patent was sustained. Doughty v. Bay et al., 9 Blatch. 262.— Blatch- FOBD, 1871. 121. The location of a subsidiary engine for working the cap.stan, in a particular locality on tlie deck of a vessel, may be patentable inven- tion., M'Millinetal. v. Barclay etal., 4 Brews. 275.— McKbnkan, 1871. 122. "If a new and useful result is effected by means before well known, or any useful re- sult is produced by a new mechanical device or combination of old mechanical devices, in botli cases the exercise of invention must necessarily be presumed, because both are the proper sub- jects of a patent." — lb. 123. " A patentable subject must not only be new and useful, but it must involve some exer- cise of the inventive faculty, and it must not be merely the application of an old thing to a new use." Penn. Salt M'fg Co. v. Thomas, 8 Pliil. 144.- McKbnnan, 1871. 124. " The patentability of an alleged inven- tion is, in many cases, most satisfactorily shown by its utility. ' ' — lb. 125. Complainant's patented improvement in putting up caustic alkali consisted in pouring the molten caustic alkali into the casing, and then making the casing air-tight. Small metal cans were old In the prior art, likewise the knowledge of preserving caustic alkali in air- tight packages. The patent was sustained. — lb. 126. Complainant's patent was practically for the automatic spinning of brass kettles. A prior patent showed somewhat similar machinery- for polishing, but was not adapted for spinning. Complainant's patent was sustained. Waterbury Brass Co. v. E. Miller & Co., 9 Blatch. 77.— WOODBUPP, 1871. 127. The patent in suit was for the slow cool- ing of cast-iron car wheels. Annealing some kinds of castings was old, but the patent was sustained. Mowryv. TF/Mto«y, 14 Wall. 620. — Sup. Ct. 1871. 128. " Making a prior device which will serve the like useful purpose is not necessarily antici- pating an invention. Where the mechanical means employed are different, and the mechani- cal result is different, one does not anticipate the other. If this were not so, an inventor who had made a machine which would serve a. useful purpose would exclude all others from the right to a patent for other mechanical devices or com- binations, producing the like useful result in other modes, or producing a different mechan- ical result which served the same purpose." Buerk v. Valentine, ^'EisXch. 477. — Woodkltp, 1872. 129. Complainant's patented prepared paste for bookbinders consisted of common paste, with additions in substantially the following proportions : " Flour, two pounds ; chloride of sodium, one ounce ; alum, one quarter ounce ; bichloride of mercury, six grains ; and so made and compounded as to obviate the objection which would naturally arise from the use of the rank poison, corrosive sublimate, in this com- position, by the well-known fact in chemistry that the gluten of the flour acts as an antidote to the poisonous qualities of the bichloride of mer- cury, thus rendering the compound innocuous and harmless." Preserved paste had previously been made j containing every one of these ingredients sepa- rately, and every one in combination except salt. Complainant's patent was sustained. Woodw'ard V. Morrison et al., 1 Holmes, 124. — Shepley, 1872. 130. The distinguishing feature of complain- ant's patented pad for harness saddles was an impervious bearing surface of vulcanized rub- ber. The same pad, with bearing surface of different material, was old in the art. Complain- ant's patent was sustained. Am. Saddle Co. v. Hogg, 1 Holmes, 133.— Shepley, 1872. 131. " The patenting a material for one pur- pose does not necessarily invalidate patenting it INVENTION- SUPFICIENC Y OF. 443 for a different and not analogous purpose." Jenkins If. Walker etal., 1 Holmes, 130.— Shep- I.BY, 1872. 133. An English patent showed a hard rub- ber compound for journal boxes ; a later home patent was for a somewhat similar compound for valve packings. The home patent was sus- tained. — lb. 133. The process of grinding wood for mak- ing paper-pulp, which consists in having the grinding surface moving across the fibres, and in the same plane with them, is patentable over a prior process of grinding the ends of the fibres, or of grinding diagonally across the fibres. Mil- ler y. Androscoggin Pulp Co., 1 Holmes, ,142. — Sheplet, 1872. 134. Defendants contended that complainant's patented invention was communicated to him by a third party. The court found that the third party did not communicate to complainant suffi- cient facts to enable complainant to make a model of tlie invention, and sustained the patent. Putnam v. Hickfij ci al., 3 Bissell, U. S. C, 157. —Miller, 1872. 135. Tilghman's sand-blast for working glass and the like is patentable over projecting a stream of sand, with steam, from a locomotive engine for the purpose of driving cows from the track of a railroad. Tilghman v. Morse, 9 Blatch. 421.— Blatchford, 1872. 136. The claim in complainant's patent was : " ' The but ton, formed of a single piece of metal, with the edge turned over, and with one central hole, as a new article of manufacture, as speci- fied.' " Prior buttons contained one or two of the three features of complainant's patent^ but complainant's patent was sustained on this point. Piatt V. U. 8. Patent Button, Pimt, Needle & Mack. M. Co., 9 Blatch. 343.— Blatchford, 1873. 137. Complainants' invention in hand-mirrors consisted "in mounting the glass on a base- piece of wood or other material, having a stif- fened extension running into the handle, and em- 1 bedding the whole in a composition of cement of | suitable description, that upon hardening forms ■ the back, edges, and outside handle of the mir- ror." This was held |)atentable over a hair- brush in which the bristles, inserted through a perforated plate, were embedded and held firmly in a suitable cement, which cement, at the same time, combined the plate and an extension of the plate with the handle, forming the back and handle of the brush. Clavk et al. v. Scott, 9 Blatch. 301.— Blatchford, 1873. 138. " Many a useful and valuable invention has been of a device so simple and so seemingly trifling that men wonder that it was not made long before. The inquiry is. Was such a device before known?" Eirby et al. v. Dodge & 8te- vemon Mfg Go. et al. , 18 Blatch. 307.— Wood- ruff, 1872. 139. "Invention may be as necessary to re- form or adapt an existing machine to the per- formance of work which it would not, as origi- nally constructed, perform, as it is to make a new machine ; and whether this is done by re- moving a device or by adding one, by removing a bolt or by inserting a bolt, by making an ap- parently great mechanical change or a small one, the principle governing the subject is the same. "—7" J. 140. Complainant's invention consisted in se- curing, along the edge of the rubber cushion of a billiard table, a strong, narrow cord to receive the impact of the ball, and protect the cushion against such impact. In a prior device there was a piece of clastic material along the upi^er face of the rubber, to be lifted by the force of the ball when the ball struck the rubber be- neath, and by this spring action hug the ball down to the table and prevent its hopping. The patent in suit was sustained. Decker v. G-rote et al., 10 Blatch. 331.— Blatchford, 1873. 141. Complainant's improvement was the firmly securing along the corner of the rubber cushion of a billiard table of a strong, narrow cord, to receive the impact of the ball, and pro- tect the cu.shion against such impact. In a prior device a strip of liorn was used as a facing to the rubber pad, or inserted in a slit cutlnto the pad and made fast therein by rubber cement. The patent was sustained. — lb. 143.. " On the argument, it was insisted that a patent is void if the patentee did not reduce the invention to practical use before the patent was obtained. This proposition is wholly unsound. No such condition is required by the act of Con- gress ; and if it were true that a patent would be void on that ground, no patent could properly be granted unless proof was furnished that the invention claimed had gone into practical use, which is not and cannot, under the statute, be made a condition of granting the patent. It is enough that the inventor has perfected his in- vention and is able to furnish to the Patent Oflfice such specifications and model as the law requires. Having done this, the patent, in so far as prerequisites to its validity, either by way of experiments or use, are material, is valid." Wheeler, Jr., v. Clipper Mower d; Reaper Co., 10 Blatch. 181.— WooDBTjFF, 1873. 143. An invention, as stated in the claim of a patent, was : "The use of phosphoric acid or 444 INVENTION— SUFFICIENCY OF. acid phosphates, when employed with allcaline carbonates, as a substitute for ferment or leaven in the preparation of farinaceous food. " There- of the court said : " The fourth claim is a claim to the use of the acid and an alkaline carbonate, as a substitute for ferment or leaven, in the preparation of farinaceous food. This is a claim to the actual use of such acid and alkali in mak- ing raised dough. Nothing is shown which an- ticipates this claim, and the invention covered by it is patentable. Horsford was the first to use phosphoric acid, or an acid phosphate, for the purpose. It required experiment and invention to find out whether phosphoric acid could be used in place of tartaric acid practically and successfully, and with safety to health." Rum- ford Chemical Wor/cs v. Lauef, 10 Blateh. 132. — Blatchford, 1873. 1,44. A reversible wrist-band or cu2 constitutes patentable invention over a non-reversible cuff. Union Paper Collar Co. v. Van Deusen et al., 10 Blateh. 109.— Blatchford, 1873. 145. The cases are ' ' often met with in the his- tory of patents where an invention, once per- fected, has shown itself to be so useful and so highly appreciated as to have gone at once into so extensive use that it is inh^ently impossible it should have been known before and not have gone into general use. Its success leads infring- ers and rival inventors to set up crude and un- successful experiments as anticipating it, and dim recollections are stimulated and conscierice is strained to clothe with living flesh what was an inert and useless skeleton." Hitchcock v. Tremnine et al., 9 Blateh. 550. — Blatchford, 1873. 146. Complainant's patent being for a corset- spring, and defendant claiming that it was an- ticipated by a prior carriage-spring, the court sustained the patent, and said : " The carriage- spring differed :^rom the corset- spring in not having that flexibility at the .centre of its length which the corset-spring has and must have, and in not curving in one direction a? one end and in the other direction at the other end, as the corset-spring is shown in the drawings of the patent to do. In other words, the carriage-spring was not a corset-spring, and could not be used as such, without such a change as involved in- vention. " Barnes v. Straus, 9 Blateh. 553. — Blatchford, 1873. 147. " Though a competent mechanic would easily adapt a treadle to a hay-rake, yet the idea of the combination was of Itself a meritorious Invention and a new one." Brown v. Whitte- -moreet al, 5 Pish. P. C. 534.— Lowell, 1873. 148. The Adams' patent for electro-plating of nickel being under consideration, the court said : ' ' However suggestive the experiments of others may have been in electro-deposition of nickel from different solutions, or in the mere casting of nickel, they cannot be made available to de- feat a patent granted to one who, after all the experimenters had failed to secure a practical and successful result beneficial to the commu- nity and a valuable contribution to the useful arts, first succeeded so as to be able to disclose to the public a practically useful and. successful process, by him first brought to perfection and first made capable of useful application." United Nickel Co. v. Authes, 1 Holmes, 155. — Shbplet, 1873. 149. Complainant's patented improvement consisted in "applying foreign heat to a hot chilled wheel at the point of time when it has reached a particular stage of cooling, by means of such foreign heat bringing the whole casting up to a higher and uniform temperature, and maintaining an equable abatement of heat in the furnace or chamber under the control of the operator." Annealing in various ways with various materials and for various purposes was old. Complainant's patent was sustained. Mowry v. Whitney, 14 Wall. 620.— Sup. Ct. 1873. 150. Although a form of bonnet ma}- be old . when made of one thickness of muslin, " it might be a patentable improvement to make the bonnet of two thicknesses. ' ' Baldwin v. Bernard et al., 5 Pish. P. C. 443.— Blatchford, 1873. 151. Complainant's patented improvement in valves was the arrangement of an annular cham- ber or cup, containing an elastic packing, with a raised seat, in connection with two bearing surfaces outside of the cup and the raised seat. It was held that the prior construction, consist- ing of a raised seat and a metallic receptacle fit- ting over it, did not anticipate the invention ; likewise that a prior valve with a raised seat and cup, and a packing of lead or tin filled into the cup, did not anticipate the invention. Jen- kins V. Johnson et al., 9 Blateh. 516. — Blatch- ford, 1873. 153. " It is not enough to defeat the novelly of an invention that prior contrivances are pro- duced which might, with a little change, have been made into the patented contrivance, though not so intended by the maker." Cooke et al. v. Ernest et al., 5 Pish. P. C. 396.— Woods, 1872. 153. A compound which in a thin state has been used as a paint is, in a thicker state, pat- entable as a pavement. Plastic Slate Hoofing Joint Stock Co. et al. v. Moore, 1 Holmes, 167. — Shbpley, 1873. INVENTION— SUFFICIENCY OP. 445 154. A fruit jar -which is old In all its parts except as to an improvement In the bearing of the cover on the rubber packing is a patentable improvement. McCully et al. v. Cunningliam etal, 3 Pittsb. 366.— McKennan, 1872. 155. A hotel register with marginal adver- tisements is a patentable improvement. Hawes v. Washburn, et al., 5 O. G. 491.— Woodruff, 1872. 156. Complainants' improvement in the mak- ing of bonnet bodies consisted of a bonnet body- embossed in imitation of straw and other braid by dies, which at the same time gave to it its ultimate shape, such body being made of two or more thicknesses of muslin or other suitable fabric united by starch or other suitable stiffen- ing substance. It was old in the art to make bonnet frames of two or more thicknesses of muslin stuck together by paste and stamped into shape by means of smooth dies. It was old in the art to stamp, with flat engraved dies, two or three-ply buckram in imitation of straw braid to be used in making bonnets. Complainants' patent was sustained. Baldwin et al. v. Schultz et al., 2 O. Or. 319.— Blatchford, 1872. 157. A skirt wire made by folding the fabric over one or more wires and securing it by siz- ing or glue or pressure is patentable over a wire with the fabric woven around it. Young v. Lippman etal., 9 Blatch. 383. — Blatchford, 1873. 158. Although certain corrugations for strengthening snuffers may be old, yet to use the same for strengthening the handles of spoons with different adaptations is patentable inven- tion. Oroyean v. Peak, Stow <& Wilcox Co. et al., 11 Blatch. 54.— Blatchford, 1873. 159. " Old elements placed in new and differ- ent organizations, producing in such new or- ganizations different results, or the same results by a new and different mode of operation, do not prevent such newly organized mechanisms from being patentable." Ohild v. Boston & Fair Haven Iron Works Co., 1 Holmes, 303. — Shepley, 1874. 160. " Is the mere location of devices, such devices not being ne-rt-, patentable ? To this the answer must be that it is not. If the result is the same, and nothing new is required to adapt an apparatus to operate in its new location, noth- ing has been done that can be called invention. If such change of location produced a new com- bination of devices, producing a new result, then, indeed, something patentable may have been devised ; but mere change of location is not invention. " On the other hand, where change of location involves the employment of new devices to adapt an apparatus for use in the new position, and a beneficial result is produced, then this location, in its combination with such new devices— that is, the means by which the result is produced, and not the 'result itself— is patentable. And where such change of location brings into exist- ence a new combination of devices, operating by reason of such new combination to produce a new and useful result, the new combination is patentable. " Marsh v. Dodge & Stevenson M 'fg Co., 6 Fish. P. C. 563.— "Woodruff, 1873. 101. Complainants' invention was the render- ing of the interior of a rotary blower-case true by means of i^laster-of-Paris or its equivalent. This was held patentable over a pump lined with molten metal. Boots et al. v. Hyndman, 6 Fish. P. C. 439.— Emmons, 1873. 163. " Novelty and utility are both requii;ed to constitute a palentabJe invention within the meaning of the patent law, but where both of these qualities are combined, it is settled law that the right to a patent does not depend upon the 'quantity of thought,' ingenuity, skill, labor, or experiment, or the amount of money which the inventor may have bestowed or ex- pended upon his production." Jones\ etal, v. Small, 3 Cliff. 563,— Clifford, 1873. 163. Although the packing and preserving of beets, carrots, peas, and beans may be old, yet the packing and preserving of green corn in a peculiar manner is patentable.— 76. 164. The utility and hence the patentability of a new combination is shown by extensive demand, for use, thereof. Robertson v. Secombe M'fg Co., 10 Blatch. 481.— Blatchford, 1873. 165. Certain mechanisms were old in the prior art for making hat bodies. Complainant's patentee arranged them together in one machine, and a patent thereof was sustained. Eicliemeyer Hat Blocking Macli. Co. v. Pearce et al., 10 Blatch. 403.— Blatchford, 1873. 166. ' ' The uniform, continuous, and cohe- rent deposit of one metal upon the surface of an- other, so as to produce a coating of the desired thickness, purity, uniformity, coherence, and permanency of adhesion, as distinguished from the mere electrolysis or electro-deposition of a metal out of a solution, whether such electro- deposition be or be not on the surface of another metal," amounts to patentable invention. United Niekel Co. v. Keith, 1 Holmes, 328.— Shbplbt, 1874. 167. Complainant's patent being for a truss or abdominal supporter, it was sought by the defendant to have the patent anticipated by a prior supporter applicable to a different purpose. 446 INVENTIOK— SUFFICIENCY OP. or rather applicable to deformed persons. The court held complainant's improvement patent- able. Moody V. Taier, 1 Holmes, 325.— Shbp- LET, 1874. 168. Complainants' patented improvement in paint for ships' bottoms was the same as a prior compound, less one ingredient before supposed to be essential. It was held patentable. Tarr et al. V.' Polsom, 1 Holmes, 313. — Sheplet, 1874. 169. The patent in question was for a reflector for gas-lights, having a glass lining. Defend- ants contended that as the prior art contained such reflectors with a substitute for the glass lining, complainant's improvement did not in- volve patentable invention. The court held otherwise. Prink v. Petry et al., 11 Blatch. 432.— Blatchfoed, 1874. 170. An inventor's changes, from previous arrangements, may be small to appearance, but if they produce practical success in what was before substantially useless they amount to pat- entable invention. — lb. 171. Making the cross-bar of a shawl-strap rigid is patentable invention. Crouch v. Speer et al., 1 Bann. & Ard. 145.— NrxoN, 1874. 173. Complainants' patent was for revolving glass-cutters. In the prior art there was a sim- ilar but larger cutter for finishing grindstones. The court limited the patentee to a particular form of cutter by construction, and held that the accidental presence of that form in the grindstone finisher was not material. Monce et al. V. Adams, 12 Blatch. 1. — Ship.man, 1874. 173. Complainants' patent was for a small re- volving glass-cutter. A pipe cutter of the prior art had a larger, similar revolving cutter. Com- plainants' patent was sustained. —lb. 174. Complainant's improvement in apparatus for carburetting air was : " ' The arrangement of the carburetter with a motor-wheel, said wheel being driven by a descending weight or other equivalent mechanical power applied to force air through the carburetter to the burners, said carburetter being placed within a vault, by itself, separate from the building to be lighted, the whole arranged and connected with pipes, substantially as herein ' . . . ' described and set forth.'" The placing of the carburetter in a vault in the earth was the feature of novelty, and the patent was sustained. Gilbert & Barker M'f'g Go- V. Tirrell, 12 Blatch. 144.— 'Wood- EUFF, 1874. 175. The patented improvement was " a brace- let .. . made of base metal plates, coated with a more costly metal or other material, and the foundation plate of which is provided with beads at its edges, at such a distance apart that they hug closely the fellow piece of the bracelet, and that, after the two parts of the bracelet have been united, no uncovered portion of the base metal remains visible." A prior device had the edges of the base-plate turned over so as to make an underlaying lip or slide on each edge of the bracelet, but the maker thereof, instead of sol- dering a fellow piece to the base-plate at the in- side of the beads, slid bits of metal with pro- jecting lips under the lips or slides of the base^ plate. Complainants' patent was sustained. Barclay et al. v. Thayer et al., 12 Blatch. 107. — Blatchfoed, 1874. 176. Complainant's patent was for grain sep- arators. The court found invention in "the manner in which the screens and boxes are lo- cated and constructed, their width, inclination, and motion, as well as relation to the blast from' the fan through the -sertical spout," the combi- nation generally being old. Booth v. Parks, 1 Flippin, 381.— Wblkee, 1874. 177. A dental vulcanite plate is patentable over the prior dental plates of gutta-percha, tin, platinum, and porcelain. Qoodyear Bental Vul- canite Co. et al. V. Smith, 1 Holmes, 354. — Shep- LEY, 1874. 178. " Strictly speaking, no new manufac- ture is anything more than a new combination and arrangement of old materials ; and when- ever such new combination and arrangement produces a new and usefr.l result, there being diversity of method and diversity of result, the invention is patentable." — lb. 179. There is a "rule . . . frequently relied on to uphold the novelty of inventions, which deduces the fact of novelty from the extent of the revolution immediately resulting in that de- partment of the arts in which they are employ- ed." Goodyear Denial Vulcanite Co. et al. v. Willis, 1 Flippin, 388.— Emmons, 1874. ' 180. "This is the history of the art in rela- tion to most of the important discoveries and in- ventions of the present day. . . . The want which the discovery or invention is to supply is first felt, and the genius of invention is aroused, and the thoughts and efforts of inventors are direct- ed in a particular channel. When one achieves success, it not infrequently appears that prior inventors have been travelling in the same path ; and, in the light of his success, we look back with wonder at the omission of those wlio started earlier in the race to take the last short step which separated them from the goal. But it is the last step in the race of discovery or in- vention that counts, and he who first cross,^s the dividing line between experiment and success wins the prize over those who, having started INVENTION— SUFFICIENCY OF. 447 earlier in tlie race, are but a single step behind at the goal." Pike v. Prmidence & Worcester R. R. Co. etal., 1 Holmes, 445.— Sheplby, 1874. 181. The patented brush in suit had a brush- head with an annular groovp and a rubber ring fitting therein. A prior door-stop had an an- nular groove in it with a rubber ring fitting therein in the same manner. The door-stop was held not to anticipate the patent for the brush. Murphy et al. v. Kissling et al., 1 Holmes, 432. — Sheplby, 1874. 182. The prior art showed the combination with a locomotive engine of a pilot truck fitted to allow lateral motion, but incapable, when in I combination with the engine, of swivelling on a } king-bolt at its centre. The later combination i of a locomotive engine with a truck capable not only of lateral motion, but also of free rotation around the king-bolt at its centre, was held pat- entable. Locomotive Engine Safety Tmclc Co. v. Penn. R. R. Co., 1 Bann. & Ard. 470.— Strong, 1874. 183. The improvement in dispute was an ap- paratus for conveying heated masses of iron from a furnace to a rolling-mill, and the means em- ployed consisted " of a power-driven hauling mechanism with a chain, one end of which is secured to a shaft ijarallel with the rolls, and turned by the machinery which turned the rolls ; the other end of the chain is furnished with grappling-hooks for seizing the pile before it leaves the furnace, and between the latter and the rolls there_is a swinging crane from which a platform is suspended." "Prior to this in- vention, the manner in which the fagot was transferred was by means of a truck or carriage which received it when withdrawn from the fur- nace, and it was then dragged by ten or a dozen men, stationed on each side, to the rolls." The improvement was held to possess patentable novelty. Pennock. J. L., In, re, 1 MacArthur's P. C. 531.— MacArthub, 1874. 184. " Whether the inventive faculty has been exercised is mostly a question of evidence, and is always to be considered in reference to the condition of the art and the results accom- plished ; and where the combination is confessed- ly new and the benefit great, the presumption is strongly in its favor. It is not always safe to consider that there has been no invention be- . cause it appears obvious and simple, for sim- plicity is often the chief merit of a patent." — lb. 185. Although the shape of the links of a patented chain may be old, making them of tub- ing, giving them certain new and useful quali- ties, constitutes patentable invention. Mulford etal. V. Pearceetal., ISBlatoh. 173.— Shipman, 1875. 186. A change in the needle-bar of a loom for weaving irregular fabrics, which materially as- sists in overcoming obstacles which had inter- fered with the success of irregular weaving, is a patentable improvement. Oarsteadt v. Uniteil. States Corset Co., 13 Blatch. 199.— Shipman, 1875. 187. A patented improvement in bottle-stop- pers consisted in a bail of i"ound wire. The prior art contained a similar device of flat metal. As the wire would imbed in the cork when the flat metal would not, and as it presented a better surface for the thumbs of the operator, the flat metal bail was held patentable. Putnam v. Weatherbee et al., 1 Holmes, 497. — Sheplby, 1875. 188. Although paper and cloth had been united as a fabric for maps, etc., it was yet pat- entable to make a collar out of such fabric. It was something more than the mere application of an old thing to a now purpose. It was the production of a new device by giving a new form to an old substance, and by suitable manipula- tion making its peculiar properties available to a use to which it had not before been applied. Union Paper Collar Co. v. White, 2 Bann. & Ard. 60.— McKennan, 1875. 189. Although Westinghouse was not the first to conceive the idea of operating railway brakes by air pressure, and although he was not the in- ventor of the larger part of the devices employed for such purposes, such fact does not detract at all from his merits or riglits as a successful in- ventor. For a successful air-brake is of im- mense importance on railroads, and the West- inghouse apparatus was the first practically suc- cessful one. Westinglwuse, Jr., v. Gardner & Ranson Air Brake Co., 2 Bann. & Ard. 55. — Swaynb and Wblkbr, 1875. 190. Where prior devices fail to come into practical use, and the later patented device does come into extensive practical use, the facts are strong evidence of a suflicieucy of invention in the patented machine. Weston et al. v. Mash et al., 1 Holmes, 488.— Shbpley, 1875. 191. Hinging a joint forward of an evener in- stead of back of it, where a new and useful re- sult is produced, amounts to patentable inven- tion. Calkins v. Bertraud et al, 6 Bissell, 494. — Blatchford, 1875. 192. The substitution of wire for a bottle stop- per of tin-plate, where the use of the wire gives the advantage that the stronger the pressure upon the cork or stopper the more securely will the fastener hold, amounts to patentable inven- 448 INVENTION— SUFFICIENCY OF. tion. Putnam v. Terrington, 3 Baun. & Ard. 337.— Nixon, 1876. 193. In a stove, combiniijg a water reservoir in such relation to the top plate and partial back plate that the reservoir performs both the func- tions of the reservoir and the partial back plate of the stove, amounts to patentable invention. Bussey et al. v. Wager ei al., 3 Bann. & Ard. 339. -Wallace, 1876. 194. The substitution of vulcanized rubber for cork, leather, or soft metal in the valve of a steam-cock is a patentable invention, and the prior application of sheets of vulcanized rubber to the edges of man-holes is not so analogous in its nature as to defeat the patent. Dalton et al. V. Nelson etal., ISBlatch. 357. — Shipman, 1876. 195. " A chance operation of a principle, un- recognized by any one at the time, and from vehich no information of its existence and no knowledge of a method of its employment is derived by any one, if proved to have occurred, will not be sufficient to defeat the claim of him who first discovers the principle, and, by put- ting it to a practical and intelligent use, first makes it available to man." Andrews et al. v. Carman, 13 Blatch. 307.— Benedict, 1876. 196. When an improvement produces a great change in the art to which it appertains, that goes far to prove patentable novelty. — lb. 197. " Mere change of location is not patent- able ; but when change of location brings into existence a new combination of devices operat- ing, by reason of such new combination, to pro- duce a new and useful result, such new combi- nation is patentable." Gilbert & Barker M'fg Co. v. Walworth M'fg Co., 3 Bann. & Ard. 371. — Sheplbt, 1876. 198. A carriage top for a child's carriage ad- justable both before and behind the child is pat- entable over a prior carriage toj) which is only adjustable rearward. Richardson et al. v. Noyes et al., 3 Bann. & Ard. 398. — Clifford and Lowell, 1876. 199. The Cummings' dental plate, as stated in the patent, "consists in forming tlie plate, to which the teeth, or teeth and gums, are attached, of hard rubber, or vulcanite so called, an elastic material possessing and retaining in use sufficient rigidity for the purpose of mastication, and at the same time being pliable enough to yield a little to the motions of the mouth." " The process of forming the plate by the use of . . . nloulds was well known, and so was the process of con- verting a vulcanizable compound into vulcanite by heating it and allowing it to cool in moulds. " The patent was sustained. Smith v. Ooodyear Dent. Vul. Co. et al., 93 U. S. 486.— Sup. Ct. 1876. 300. An improvement in lamps for burning kerosene which dispenses with a chimney is not anticipated by prior smoke-consuming devices which will answer the purpose with some slight changes. Irwin et al. v. Dane etal., 9 O. G. 643. — Drummond and Blodgett, 1876. 301. The complainant's patent in suit was for a pair of dies for pressing, polishing, and trim- ming the edges of the rubber coating of harness trimmings so as to imitate stitching, and to fin- ish each article without hand labor. Complain- ant's inventor was not the first to use dies in the manufacture of rings, buckles, terrets, and other harness mountings, nor thCifirst to imitate leather stitching on rubber-coated articles, nor the first to densify and polish with dies plastic composi- tions surrounding a metal core, by heat and pressure. Complainant's patent was sustained. Albright v. Celluloid Harness Trimming Co., 3 Bann. & Ard. 639.— Nixon, 1877. 303. A peculiar form and shape of the coil in plug tobacco is patentable where the result is to permanently retain the moisture and prevent de- cay. Eppinger v. Ricl^sy et al., 14 Blatch. 307. — Shipman, 1877. 303. The patent in suit was for a self-closing faucet. The patented combination of the screw- follower with a quick-threaded screw, valve, and spring was to be found in earlier patents, but the patentee in the patent in suit had simplified the parts and made structural changes therein. The patent was sustained. Zane et al. v. Peck Bros. & Co.,% Bann. & Ard. 36.— Shipman, 1877. 304. Reversing the direction of the rotation of a beater-bar in a corn-sheller, producing thereby a marked improvement in operation, is patent- able invention. Adams v. Joliet M'fg Co., 3 Bann. & Ard. 1.— Blodgett, 1887. 305. As regards the floats and buckets of water-wheels, "form is material, substantial, and functional, and very slight changes of form and proportion involve functional clianges of great importance." Swaine Turbine &M'fg Co.y. Ladd, 3 Bann. & Ard. 488.— Shbpley, 1877. 306. For an example of change of form and proportions of a spinning spindle held to consti- tute patentable invention, see — . Pearl et al. v. Ocean Mills et al., 3 Bann. & Ard. 469. — Shep- LET, 1877. 307. " No more difficult task is imposed upon the court in patent causes than that of determin-. ing what constitutes invention, and of drawing the line of distinction between the work of the inventor and the constructor. The change from the old structure to the new maj' be one which one inventor would devise with the expenditure of but little thought and labor, and another INVENTION— SUFFICIENCY OF. 449 would fail to accomplish after long and patient effort. It may be one which one whose mind is fertile in invention will suggest almost instan- taneously, when the skilled hand of the con- structor will fail to reach the apparent simple result by the long and toilsome process of experi- ment. It may be one which, viewed in the light of the accomplished result, may seem so simple as to be obvious almost to an unskilled opera- tive, and yet the proof may show that this ap- parently simple and obvious change has pro- duced a result which has for years baffled the skill of the mechanical expert, eluded the search of the discoverer, and set at defiance the specula- tions of inventive genius. " — lb. 308. Although the improvement may be a small feature of construction, yet if it has nov- elty and merit it will support a patent. Miller & Peters M'fg Co. v. Du Brtil, 3 Bann. & Ard. 618.— SwATNE, 1877. 309. Complainant's patented machine was for manufacturing augur bits, and in that machine, by the action of the swaging dies upon the bit held in the clamping dies, the floor-lips were drawn and spread into proper shape and the cut- ting edges brought into line with the thread of the pivot. A prior machine performed all of this except the rolling out of the floor-lips. The patent was sustained. Bruff v. Ives, 14 Blatch. 198.-SHIPMAN, 1877. 310. Complainants' patented Improvement consisted of " a plug of tobacco having a hard label pressed into one of its faces, as specified." Of this improvement the court held that, " sim- ple as it is, it nevertheless involved reflection and experiment to bring it to practical maturity, and its evident utility, indicated by its prompt displacement of other identifying devices, and its very extensive use, even by the respondents, strongly attests its patentable merit." Loril- lard et al. v. McDowell et al., 2 Bann. & Ard. 531.— McKennan, 1877. 311. An improvement in saw-mills " consisted of the combination of the saw with a pair of curved guides at the upper end of the saw, and a lever, connecting- rod or pitman, straight guides, and slides or blocks and crank-pin, or their equivalents, at the opposite end, ..." giv- ing to the saw in its downward movement a rocking or rolling motion, by means of the com- bination of the cross- head workmg in the curved guides at the upper end of the saw, the lower end of which is attached to a cross-head, working in straight guides and pivoted to the pitman below the saw, with the crank-pin.' " In the device of a prior patent the saw was fixed at the upper end between two blocks, and at an angle to the perpendicular of forty-five degrees or thereabouts ; these were placed in grooved guides in which the blocks, with the saw attached, were arranged to slide ; these guides were fastened to and supported by the saw frame ; the top of the saw was fastened directly to a short rod connected to the extrem- ity of a fly-wheel. The court found patentablo novelty in the patent in suit. Hamilton v. liol- lins, 5 Dillon, 495.— Nelson, 1877. 313. Where the last step in the process of manufacture is new, it impresses upon the whole method the character of novelty. Klein V. Park et al., 3 Bann. & Ard. 145.— McKen- nan, 1877. 313. Complainant's patented invention con- sisted in covering the tread of a carriage-step, with vulcanized rubber clothing having an un- dulating surface, whereby projections of rubber were presented upward to receive the pressure of the foot, also providing a permanent surface to the step, resilient under the foot. In the prior art rubber had been used as a soling to stirrups and applied to shoe-soles ; the prior art also showed iron treads with channels running to the margin, for doorsteps and the like. Com- plainant's patent was sustained. Ruhber Step 31' fg Co. V. Metropolitan R. R. Co. et al., 3: Bann. & Ard. 353.— Sheplet, 1878. 314. In a printing-press the combination of a, fixed knife with a sheath is patentable over a prior combination of a spring-knife with a sheath. Bullock Printing Press Go. v. Jones et al., 3 Bann. & Ard. 195.— Wheeler, 1878. 315. " The slight change, obvious perhaps to an inventor, of admitting air to a meter, and using the meter-wheel as an air-pump, although it had before been used with similar machinery to increase the force of the gasometer, was a patentable invention." Munson et al. v. Gil- bert & Barker M'fg Co., 3 Bann. & Ard. 595, —Lowell, 1878. 316. Ordinarily "mere change of material is unimportant, but when the question is. Who first completed the working device ? the change of material by which the result is for the first time obtained is very important. ' ' Foote v. Fi-ost et al., 3 Bann. & Ard. 607.— IjOWEll, 1878. 317. Complainant's patent was for a broom for railroad rails, with the face fitted to the shape of the rail. The court sustained the pat- ent, saying i " It is not invention to change one well-known material for another, or to apply a well-known process, without some adaption more than every skilled mechanic could apply, to a new art or subject ; but a change in the form of a machine or instrument, though slight, 450 INVENTION— SUFFICIENCY OF. if it works a successful result, not before ac- complished in a similar way in the art to which it is applied, or in any other, is patentable." Isaacs V. Abrahams, 3 Bann. & Ard. 616. — LowBLL, 1878. 218. The improvement in complainant's pat- ent in suit was to make a reed-board of an organ or the like, so that a third of the three sets of reeds should be acted upon instantly and simul- taneously by the rush of air upon opening the valve ; and this result was effected by placing two sets of reeds on the same horizontal plane, and placing the other set on an inclined plane, eaph with its base on the same level as the first and second sets. Previous to this improvement the same operation existed in reed-boards hav- ing three or more full sets of reeds, but did not exist before in a reed-board having three sets of reeds in a reed-board no larger than that there- tofore used for full sets. Complainant's patent was sustained. Burdett v. Estey et al., 15 Blatch. 349.— Blatchford, 1878. 219. Complainant's patented improvement was ; " The combination of gutta-percha and metallic wire in such form as to encase a wire or wires, or other conductors of electricity, with- in the non-conducting substance, gUtta-percha, making a ' submarine telegraph cable, ' at once flexible and convenient, which may be suspend- ed on poles in the air, submerged in water, or buried in the earth, to any extent, for atmos- pheric and submarine telegraphic communica- tion, and for other electric, galvanic, and mag- netic uses, as hereinbefore described." Thereof the court said : ' ' The claim is valid, even though a metallic wire covered with gutta- percha existed before the plaintiff's invention, if it was not known that gutta-percha was a non- conductor of electricity and could be used to insulate the wire. The use by the patentee of the wire so covered to conduct electricity was not a double use of the wire, even though the covered wire existed before, nor was it a use of it for a purpose at all analogous to any use be- fore made of it, if such prior use of it was not to conduct electricity along the wire, and if it was not before known that gutta-percha was a non-conductor of electricity and could be used to insulate a metallic wire used as a conductor of electricity. " Colgate -v. Western Union Tele- grwph Co., 15 Blatch. 865.— Blatchtopd, 1878. 220. The use of gutta-percha instead of india- rubber to insulate a wire is not a mere change of material, not an obvious substitution, and is therefore patentable. — Ih. 221. " When change of form produces a new and beneficial result, such a change may be patentable." Thatcher Seating Go. v. Carbon Stove Co., 4 Bann. & Ard. 68.— Nixon, 1878. 222. Complainant's patent was for a skirt pro- tector, as a new article of manufacture, bound with or composed of enamel cloth or other water- proof material. A prior patent described a binding for skirts presenting an india-rubber or similar flexible edge intending to protect the skirt ; this binding was a part of the skirt. Com- plainant's patent was upheld by the court as a patentable novelty. Macdonald v. Blackmer et al., 4 Bann. & Ard. 78.— Lowell, 1878. 223. The Sarven wagon-wheel consisted of a wooden hub mortised to receive each alternate spoke, the other alternate spokes being shaped at the base in the form of a wedge to fit between the alternates first mentioned ; circular angle irons were then driven upon the hub, on the sides of the spokes, and then fastened together with small bolts through the spokes. Com- plainants' patented improvement had the mor- tised central hub and the metallic ring surround- ing it — not two rings held together by bolts, but a single ring with its flanges connected by webs forming mortises into which the tenons of the spokes were driven. This latter improvement was held to involve patentable novelty. Hall et aX. V. JoTies et al., 8 Bann. & Ard. 455. — Nixon, 1878. 334. Complainants' patented improvement in ornamental chains consisted in a box link having three or more perforated sides, each made of a separate piece of plated metal bevelled at its edges, so that, when the several sides were put to-, gether, they formed a mitre joint and were united by soldering from the inside of the link, the plated surface being on the outside. In this manufacture no gold or silver was wasted on interior plating. This construction was held patentable over a similar construction plated on both sides. Simmons et al. v. Blackington et al, 3 Bann. & Ard. 481.— Lowell, 1878. 225. The complainant's patented thing was a new and useful composition for a table beverage, consisting in a mixture of water, sugar, oil of wintergreen, cut in alcohol, brewers' yeast, and burned sugar. All of the ingredients had been mixed together before except the oil of winter- green. The bark of birch-tree had also been used for flavoring beer. Complainant's patent was sustained. Rogers v. Eiinis, 15 Blatch. 47. — Blatchford, 1878. 226 Complainants' patent in suit was for a roofing fabric composed of a layer of bituminous material between sheets of saturated paper, in- creased in thickness by the addition of alternate layers of material and paper when and as de- INVENTION— SUFFICIENCY OF. 451 sired. A prior English patent was for a coating of layers of adhesive material and broken glass on paper and boards ; another prior fabric was composed of a sheet of cloth between two layers of bitumen ; a third prior fabric consisted of a central web of cloth covered on both sides with adhering layers of water-prooflng, the outward side of one of which was covered with a layer of paper fixed thereto by contact, in a warm and plastic state ; on the outward side of the other layer of water-proof was a layer of sand or its equivalent. The patent in suit was sustained. Heady Roofing Co. et al. v. Taylor et al., 15 Blatch. 94.— Wheelbb, 1878. 337. It is a patentable improvement to per- forate with holes the shell surrounding the re- volving beating instrument of a grain scourer and thus cause, by the action of the fan, the matter detached by the scourer to pass through such holes. Howes et al. v. McNeal, 15 Blatch. 103.— Blatchpoed, 1878. 238. ' ' Where the patented thing is an entirety, consisting of a machine or product, the respon- dent cannot escape the charge of infringement by alleging or proving that a part of the thing pat- ented is found in one prior patent or machine and another part in another prior patent or ma- chine, and from the two or any greater num- ber of such exhibits draw the conclusion that the patentee is not the original and first in- ventor of the improvement in question." Kel- leher et al. v. Da/rUng, 4 Cliff. 434. — Clifford, 1878. 239. " The patent law protects simplicity and economy of construction, as against prior com- plex and expensive combinations." Gottfried et al. V, Phillip Best Brewing Co., 5 Bann. & Ard. 4.— Dtbk, 1879. 230. " It is a pertinent question, if the mech- anism described in the prior patent was substan- tially the same as complainants', organized and capable of operating substantially in the same way, why, during the period that the former was known to the world, it has not been applied to the same use as complainants'." — li. 331. " Any prior machine which would not produce substantially the same results as the one patented could not be substantially the same machine, no matter how strongly the prior ma- chine may resemble the patented machine in its construction. ' ' — 1 b. 233. "Mere change in the form and propor- tions of a well-known instrument or machine, however great, will often be held merely color- able or unessential. The inquiry is whether that indescribable quality called invention has been employed in making the change. " Miller's Falls Co. V. Backus, 5 Bann. & Ard. 53. — Lowell, 1879. 233. Although metallic springs having a par- allel number of strips were old, it was held pat- entable novelty to make a spring of a parallel number of strips bolted together. Ladd v. Ikiclcer M'fg Co., 4 Bann. & Ard. 344.— Low- ell, 1879. 234. Complainants' patent in suit was for an improvement in railroad switches and the claims were for combinations, the new element of which was certain rail sections. Prior switches lacked the rail sections. The patent was sustained. Cooke et al. v. N. T. Central & Hudson Mirer R. R. Co., 4 Bann. & Ard. 398.— Blatchford, 1879. 335. Where an apparently simple article was attained only after various trials and tests, and where many pate^its had been granted upon at- tempts approaching the same object, such facts are conclusive of the exercise of patentable in- vention. Ca/mpbell v. Ja/mes et al., 17 Blatch. 43.— Wheeler, 1879. 236. A claim of complainant's patent in suit was : " I claim a metallic cuspidor having a heavy base. A, and a light upper portion B, C, formed and combined substantially as and for the purposes herein set forth." Prior to this invention many articles had been made of three or more pieces of sheet metal joined together by horizontal seams. Lead bottoms had been used on other articles. This patented cuspidor was very successful in the market. Patentable nov- elty found to be present. United States Starnip' ing Co. v. King et al., 17 Blatch. 55. — Blatch- ford, 1879. 337. Corrugating a known form of nail may amount to patentable invention. Duriba/r et al. V. Albert Field Tack Co. et al., 4 Bann. & Ard. 518.— Lowell, 1879. 338. "The patent law requires the presence of what it calls invention, as contradistinguished from constructive ability ; but it furnishes no test, for all cases, by which they can be discrim- inated. The decision does not necessarily depend upon the amount of thought, or even experi- ment, which may have been had in reaching the result. Thus, if an old machine or process is put to a new use, invention is positively exclud- ed, although the new use may apparently be very remote from the old, requiring experiment to ascertain its practicability ; and although the actual operation of the machine or process may not be exactly the same in the new as in the old application, provided no new means are, in fact, employed." — lb. 239. Complainant's patent in suit was for 452 INVENTIOIST— SUFFICIENCY OF. " combined dead-beat and recoil escapement made by bending from flattened steel." The article of the prior art was not made by bend- ing, and the patent was sustained. Terry Clock Co. V. New Hcmen Clock Co., 4 Bann. & Ard. 121.— Shipman, 1879. 240. A successful result where previous ex- perimenters wanted to obtain the result but failed leads to the conclusion that the patentee was not merely contending with mechanical difficulties, ' but that he had a problem which required the skill of an inventor to solve.^ — Ih. 241. It seems that employing rubber packing in the seam between the ends of the staves of a tub and a cover extending over the entire tub, when others had employed paste or canvas, amounts to patentable invention. Van Marter V. Miller et al., 15 Blatch. 562.— Wallace, 1879. 242. " An invention is not like a will, depend- ing on intention. It is a fact, and, if the fact exists, it does not appear to be material whether it came by design, or accidentally without being bidden." Badische Anilin & Soda Fabrik v. Cochrane et al., 16 Blatch. 155. — Wheeler, 1879. 243. By the court : " Many chairs have been made that resembled the plaintiff's in many par- ticulars, and which might easily have been modi- fied so as to embody his invention ; but they do not appear to have been so modified before his time." "Invention often involves a new re- sult, first thought of by the patentee ; and in such cases the fact that the mechanical changes he has made are not difficult is often unimpor- tant." Stewart v. Mahony, 5 Fed. Rep. 302.— Lowell, 1879. 244. Complainant's patented cutting attach- ment for a sewing-machine differed somewhat from former cutting attachments, and had some utility over them. The change held patentable. ■Barber v. Mallett, 10 Fed. Rep. 130. — Lowell, 1879. 245. The addition of pulverized quartz to a former existing soap in order to produce a scour- ing soap is a patentable invention. Eastman v. Einckle et al., 5 Bann. & Ard. 1. — Butler, 1879. 246. A concave flange arranged on the leg of a table or similar article and coated on the under side with chalk as a barrier to insects is a pat- entable invention, although the use of the con- cave flange is old and the use of chalk as a bar- rier to insects is old. Strong, Ex parte, 17 0. G. 446.— Cartter, 1880. 247. A skirt protector of water-proof material to hang inside and below the skirt, to protect the same, is patentable over a dress facing of the same material used inside of the dress. Mc- Donald V. Shepard et al., 4 Fed. Rep. 328. — Lowell, 1880. 248. By the court : " It is said that fastening horizontal plates together by a bolt and nut, as these are, 'was old and well known before Kel- ly's invention, which is doubtless true ; but it was not a known methfid of forming a head for a burner to a gas-stove to make use of such plates." Sharp v. Tifft, 18 Blatch. 132.— Wheeler, 1880. 249. Complainants' rotary sand-paper holder for finishing shoe-soles was " a cylinder formed of two halves hinged together ; around each half sand-paper was wrapped, and its edges were brought together on the inside of the cylinder and kept tight by pins and dowels ; journals were shown to which each end of the cylinder was attached by screws." The old form of holder was solid, with the sandpaper tacked on. A hand-tool, elliptical in form, of two halves hinged together and held together by the hand was old. The patented device was held to ex- hibit patentable invention. Buzzell et al. v. O'ConraeW, 4 Fed. Rep. 325.— Lowell, 1880. 250. A patented ratchet; wrench had the advan- tage, over the ratchet-wrench attempted to be proved in the prior art, that the operating lever would take and hold fixed positions, while the lever of the prior art was liable to be turned too far either way and to require attention when ad- justed. Held, that the patented wrench exhib- ited patentable invention. Sinclair et al. v. Backus, 4 Fed. Rep. 539.— Lowell, 1880. 251. Where differences are minute, the fact that the patentee's improvement gives advantages in "work" is evidence of the exercise of pat- entable invention. Dunbar et al. v. Estabrook et al., 4 Fed. Rep. 545.— Lowell, 1880. 252. Although wire fences, including those of strands twisted together, were old, and fences armed with spikes were old, a wire fence armed with barbs is patentable. Wasliburn & Moen M'fg Co. et al. v. Haish, 10 Bissell, 65.— Blod- GETT and Drummond, 1880. 253. " If there is any invention required, then the law will not attempt to measure its extent and degree." . . . "In the absence of any other test, the courts have seemed to assume that the fact of the acceptance of a new device or combination by the public, and putting it into extensive use, was evidence that it was the product of invention."— /J. 254. Complainant's patent was for " the em- ployment of finely powdered flint, quartz, or feldspar, mixed with oil or other fluent sub- INVENTION-SUFFICIENCY OF. 453 stance," as a wood-filler. A prior patent (de- fendants') was for " the use of silicious marl or Infusorial earth for the purpose of filling and polishing wood. " Powdered rotten stone and the like had been previously used for the same purpose. Defendants infringed th? flrst-men- tioned patent and attempted to justify under the second, showing that the materials mentioned in both patents were chemically alike. Complain- ant's material had the advantages of being non- absorbent and of being angular in its particles. Held, that complainant's patent was not antici- pated by defendants'. Bridgeport Wood Finish- ing Co. V. Hooper etal., 18 Blatch. 459. — Ship- man, 1880. 255. The patentee of a horse-rake was the first to utilize the entire power of both wheels, at the middle of the rake-head, in tilting the rake. Power had thus been applied for running har- vesters, etc. The tilting device, of itself, wa.3 old. But the union of the two features was held patentable. Wisner et al. v. Grant et al., 7 Fed. Rep. 485.— Wallace, 1880. 256. A car wheel having two arches between the rim and the hub does not anticipate a wheel having one arch and a plate. Atwood v. Portland Co., 10 Fed. Rep. 283.— Lowell, 1880. 257. Billings and Bissell had made certain full-sized beds which Farnham saw before be- ginning upon his afterward patented invention. In that patented invention he embodied ideas which were in the Billings and Bissell beds. The court said thereof : " What Billings and Bissell may have done may have suggested to Farnham the device he finally adopted ; but this does not invalidate the patent. He seems to have been the first to achieve success, and . . . what these others had done should not defeat his pat- ent." Whittlesey et al. v. Ames et al., 9 Bis- sell, 225.— Blodgett, 1880. 258. A prior structure — in time-locks — had a dial with a series of holes in it, and a single pin which was to be placed in one or the other of the holes according to the time when it was de- sired to unlock. An expert testified that by the use of a succession of duplicate pins the lock- bolt could be held unlocked for a desired time and then allowed to lock, and that this use of the duplicate pins would be a matter of common mechanical skill. The court held otherwise. Tale Lock M'fff Oo. et al. v. Norwich Nafl Bank, 19 Blatch. 123.— Shipman, 1881. 259. By the court : " Assertions by ingenious and able experts in the year 1880, after inven- tion in safes has been greatly stimulated, of what could have been done by mechanical skill prior to 1874, do not press with great weight on my mind. ' ' — JJ. 260. If it be true that a prior structure for a different purpose would suggest the application made in the patent, yet if the new application required the power of inventing to adapt and apply it, "there is all the invention which the law requires." — lb. 261. The above was said of a time-lock for safes which differed from prior chronometric devices for other purposes mainly in a " dog" required between the time mechanism and the bolt-work. — lb. 263. Combination key-locks being old and clock-locks being old, it was held a patentable combination to combine a key lock and a clock- lock upon the same safe doors and same bolt- work. — lb. 263. The substitution of an intermittent rotary seed-wheel for an oscillatory seed-wheel will support a patent. Brown v. Deere et al., 2 Mc- Crary, 432.— Tebat, 1881. 264. Complainant's patented combination of blower, ice-chest, and pipes was designed to " equally distribute" the air in the apartment to be cooled. A prior structure had the combina- tion, except the feature of equal distribution. Patent sustained. Bate Bef rig crating Co. v. Toffey et al., 6 Fed. Rep. 514.— Nixon, 1881. 265. The claim of a patent was : " As an im- proved article of manufacture, a feather duster having the stems of the feathers split longitu- dinally and a part thereof severed from the re- maining part, substantially as specified. ' ' The inventor had been endeavoring, while getting up this patent, to make the stems of the feathers limber by the use of chemicals ; his wife sug- gested splitting the stems, and this mode was adopted. This suggestion was held not to in- validate the patent. National Feather Duster Co. V. Hibbard, 11 Bissell, 76.— Blodgett, 1881. 266. " The invention of plaintiff consisted in numbering or lettering each galley holder, and putting a series of pins and hooks, with corre- sponding letters or numbers, upon the upper part of this piece of furniture. " Held, patent- able. Brainard v. Pulsifer et al., 7 Fed. Rep. 349.— Lowell, 1881. 267. The prior art, as regards lawn sprinklers, showed a rotating rose containing a semi-glob- ular chamber, with ridges indented in it and holes in one side of those ridges. Complainants' rose differed therefrom in having a circular chamber, with standing holes and no ridges. Patent sus- tained. Pennington et al. v. King, 7 Fed. Rep. 462. — Lowell, 1881. 268. "An arrangement is none the less an 454 INVENTION— SUFFICIENCY OF. invention because it brings into operation the laws of nature." Hammersclilag y. Soamoni, 7 iFed. Rep. 584.— Blatchfobd, 1881. 369. Glassware graduated on its inner face is patentable over glassware graduated on its outer face, and over metalware graduated on its inner face. Hobbs et al. v. King et al., 8 Fed. Rep. 91.— AcHESON, 1881. 270. Complainants' patented buckle was hinged to the same middle cross-bar to which the tongue was hinged, and the plate had two prongs to go through the strap and bend toward each other at the points. The prior art showed a buckle the same, " except that the permanent connection with the straps was not made by clamping, but by inserting the end of the plate, which is formed with two projections, into a slit, and turning it half round ;" also another buckle the same except it had " a metal box to receive the . . . end of the strap." Patent sustained. Emerson et al. v. Howe, 8 Fed. Rep. 337.— LowBLL, 1881. 371. " In . . . patents for small articles slight differences are often important ; and, if such things are patentable at all, it must almost al- ways be in virtue of a more useful adaptation to the needs of commerce by small changes of structure, which in a great machine might be merely alternate modes of reaching a part of a general result." — lb. 273. By the court : " Much is said in the evi- dence on the part of the defendants as to the ob- vious character of this or that arrangement, and that any mechanic would know enough to do this or that. This is the often-repeated story, in belittling inventions. The invention consists primarily in finding out what mechanical opera- tion is necessary to produce the practical result arrived at. When such operation is hit upon, tlie mechanical work is easy. It is easy, when the mechanical operation is seen, to say that it was obvious that certain mechanical arrange- ments would effect it ; but mechanical arrange- ments are tried and tried in vain to reach a practical result, because the mechanical opera- tion which is to effect such result is not yet seen. In looking at the completed thing, the mechan- ical operation is there ; but the inventor, though he knew all about cams and levers and other mechanical arrangements, did not have in ad- vance before him the coveted mechanical opera- tion." Wooster V. Blake et al., 8 Fed. Rep. 429. — BiiATCinroRD, 1881. 373. When the results following a change are very marked it evidences the presence of pat- entable invention. — lb. 274. It is not material that the inventor was not entirely successful with the invention before he patented it, so long as the invention worked successfully afterward. Am. Bell Telephone Co. et al. V. Spencer et al., 8 Fed. Rep. 509. — Low- ell, 1881. 375. Complainants' patented package for car- rying eggs had rows of cells, leaving an outer row all around next the box, of which the box formed the wall. The prfor art showed these boxes with cells for other articles, but none wilh interior cells having a row of wall cells all around. Patent sustained. Coburn et al. v. Schroeder et al., 19 Blatch. 877. — Wheeler, 1881. 376. " In sewing-machines having bracket- arms, tension was given to the thread by a thumb-screw on the face-plate, accessible with convenience to the left hand of the operator, working a lever of the third order, made elastic to relieve against the action of the thumb-screw, and connected by a standard passing through the inner with the outer one of the two disks, on the face-plate, between which the thread passed." Complainant's patentee "continued to adjust the disks by a thumb-screw on the top of the face-plate, readily accessible to the right hand as well as to the left of the operator, work- ing an elastic lever of the first order inside the face-plates and connected in the same manner as the other with the disks." The change held patentable. Singer M'f'g Co. v. Henry Stewart M'fg Co. etal.,8'E'ei. Rep. 930.— Wheeler, 1881. 377. Duplication of parts, resulting in im- proved operation, is patentable. Shannon v. /. M. W. Jones Stationery & Printing Co., 10 Bis- sell, 498.— Blodgbtt, 1881. 378. A patent was for a process of preserving meats, " a combination comprising two elements or constituents : [1] enveloping the meats in a covering of fibrous or woven material ; and [3] subjecting the same to the action of a con- tinuous current of air of suitably low or regu- lated temperature. Neither was new." The result was an improvement in the appearance of the meat, and the improvement was held patent- able. • Bate Refrigerating Co. v. Oillett et al. , 9 Fed. Rep. 387.— Nixon, 1881. 379. Complainants' patented head-covering consisted " of a support of buckram or the like, a top layer of flock, and a canton flaimel or other similar lining." The prior art showed these fabrics used in various combinations, but none precisely like that of complainants, which was held patentable. Selden et al. v. Stoekwell Self-Lighting Qas-Bumer Co., 19 Blatch. 544.— Blatchfobd, 1881. INVENTION— SUFFICIENCY OP. 455 280. The horizontal band of wire bird-cages had been held in place by looping the vertical ■wires through the band and holding it there by a key. Complainant held the band in place by a bend in the vertical wire. The difEerence was held so broadly patentable as to underlie all forms of holding the band in place by bending tlie vertical wires. Maxheimer v. Meyer et al., 20 Blatch. 17.— Whkelbr,' 1881. 281. The invention In dispute was a pronged tin label pressed into the surface of a plug of tobacco to denote the maker, the quality, etc., to the consumer. Screws, nails, coins, and other similar things pressed into plugs of tobacco for other purposes, initial letters and trade names impressed into some plugs of a lot, and tin labels for the corks of bottles were old. The patent was siistaincd. Lorillard & Co. v. Ddhan, Carroll & Co., 20 Blatch. 63.— Whbelek, 1881. 282. By the court : " The fact that the de- fendant incurs the hazard and expense of a pat- ent suit, rather than give up using it, shows that, in his Judgment, it is an improvement upon any of the other basins in use." Stockton y. Mad- dock, 10 Fed. Rep. 132.— Nixon, 1881. 283. Where a patent is granted for a machine, and also a later patent to the same party for a product made by the machine, the machine is not open to the public to use, after the machine patent expires, for making the product in ques- tion. McKay et al. v. Dibert, 5 Fed. Rep. 587. —Nixon, 1881. 284. That all the elements of a patented com- bination may be singly found in prior structures is not a- pertinent fact. " It will not answer to say that any mechanic might have selected the parts and combined them. . . . The fact that no mechanic did select and combine the parts, . . notwithstanding the great need for it, is a sufficient answer to the suggestion. " Dederick V. Cassell et al., 9 Fed. Rep. 306. — Butler, 1881. 285. Simple but useful differences, as com- pared with the prior art, are i^ateptable. Searles V. Bouton et al., 20 Blatch. 426.— "Wheeler, 1882. 286. A perforated rubber disk, for insertion in a whip-socket, was old. The improvement made by complainant's patentee consisted in cutting away portions of the edge of such disk so that it kept more firmly in its seat. The im- provement was held patentable. — lb. 287. Hat-brims containing straight untwisted wires were old. Giving a permanent twist to a resilient wire was old. A hoop for hat-brims made of twisted wire whereby a droop was at- tained, was held to embody invention. Mallory M'fg Co. V. Marks et at, 20 Blatch. 33.— Blatchford, 1881. 288. " Almost all inventions at this day, that became the subject of patents, are the embodi- ment and adaptation of mechanical appliances that are old. In that consists the Invention. ... It is easy, after the desired thing is obtained, to see how an old thing could have been adapted or altered." Crandal v. Walters et al., 20 Blatch. 97.— Blatchpord, 1881. 289. " A wire blind -fastener, having a hori- zontal spring arm A, projecting end G, inclined or brace arm E, intermediate coil spring E, and horizontal eye F, the same being constructed and adapted to be applied to the blind or shut- ter, substantially as and for the purpose set forth," was held patentable over a jirior device, the same except that the coil operated different- ly ; also over a prior device that did not have the inclined or brace arm to any useful extent ; also over a prior device that had no coil. Shedd V. Washburn et al., 9 Fed. Rep. 904. — Lowell,, 1882. 290. " It is always difficult to determine what degree of improvement takes a case out of the more exercise of mechanical judgment and puts it in the domain of invention or discovery. The general rule upon the subject is that any change in the position of old elements, whereby new and better results are accomplished, is a suffi- cient exercise of the inventive faculty to war- rant the issuing of letters-patent." Stockton y. Maddock, 10 Fed. Rep. 132.— Nixon, 1881. 291. The invention in dispute consisted of fig- ures in printing type cast upon a block equal to two thirds the width of the body of the " em" [which was old], and, at the same time, increas- ing the size of the figure without increasing the size of the type of the letters and the body of the line [which was new]. Patent sustained. Bruce v. ' Marder et al. , 30 Blatch. 355. —Wheel- er, 1882. 292. By the court r " This shows that he dis- covered and put to use what others skilled in the art had overlooked ; that it was very desir- able when known, and would very probably have been found out before if ordinary skill in that art could have discovered it." — lb. 293. The patented device was a sleeve-sup- porter consisting of two clasps, one at each end of a piece of webbing. The clasps were old. •A webbing with unhandy catching devices at the end was old. The patent was sustained. Lindsay v. Stein, 30 Blatch. 370.— Blatchfokd, 1882. 294. Making the teeth of friotional gearing a certain distance apart, where advantage flows 456 INVENTION— SUFFICIENCY OP. therefrom, is patentable. Delamater et al V. Woodruff, 11 Fed. Eep. 414. — Shipman, 1882. ' 295. The patented invention being the com- bination of a lever vrith the upright part of a "whip -socket, it was held that prior devices hav- ing the same kind of a lever, but not in the same connection, did not anticipate the invention. Searles v. Worden et al., 11 Fed. Rep. 501. — Bkown, 1882. 396. Complainant's patent was for " a rubber eraser having soft-finished erasive surfaces, ' ' be- ing, in fact, produced by tumbling in a tumbling barrel. " This operation, which is called tum- bling, was applied to manufactures of india- rubber before the date of the patent, but for a somewhat different purpose, and with somewhat different results. It seems to us, as at present advised, that the article produced by this proc- ess was patentable." Lockwood\. Cutter Tower Co., 11 Fed. Rep. 724.— Lowbll, 1883. 297. By the court: "Now that it has suc- ceeded, it may seem very plain to any one that he could have done it as well. This is often the case with inventions of the greatest merit. It may be laid down as a general rule, though per- haps not an invariable one, that if a new com- bination and arrangement of known elements produces a new and beneficial result never at- tained before, it is evidence of invention. It was certainly a new and useful result to make a loom produce fifty yards a day when it never before had produced more than forty, and we think that the combination of elements by which this was effected, even if those elements were separately known before, was invention suffi- cient to form the basis of a patent." Webster Loom Co. V. Higgim etal., 105 U. S. 580. — Sup. Ct. 1883. 398. A prior device, which will not satisfac- torily perform the work of the patented device, is not a substantial anticipation of the patent. Brainard v. Gramme, 30 Blatch. 530. — Wal- •LACB, 1883. 299. Where complainant produced an article of manufacture [a silver-plated steel spoon], which was commercially and practically successful, by a succession of old processes which, though sepa^ rately old, had not been practically grouped together in the order in which he used them, the patent for his process was sustained. Wal- lace v. Jfoyes et al., 31 Blatch. 83, — Shipmas, 1883. 300. The accidental use of a process by a per- son who did not discover the special utility aris- ing therefrom, will not anticipate a patent grant- ed to him who discovers the utility of the patented process. Boyd v. Cherry, 4 McCrary, 70. — McCkakt, 1883. 301. Complainant's patented shutter-hinge being one where the opposite surfaces were first horizontal and then oblique so as to hold the shutter open, a prior hinge having the oblique surfaces at the beginning, was held not to be an anticipation. Lull v. Clark et al., 31 Blatch. 95. — Blatchfobd, 1882. 302. Intimated, that the number of parts of a structure may sometimes be an element of in- vention. ^/6. 803. By the court : " It is the policy of the law to encourage useful improvements, and I am unwilling to hold that the complainant's de- vice, consisting of old elements combined and operated as stated in the specification, practi- cally superseding as it does, all other known means of pitching kegs and other small recepti- cles, and greatly superior, as it confessedly is, to Sibel's machine for pitching large casks, is the mere equivalent of the latter, or of any other device. ' ' Gottfried v. Crescent Brewing Co. , 13 Fed. Rep. 479.— Gebsham, 1882. 304. " Although two devices, which consist of a combination of old parts, may attain, in their operation, substantially the same results, yet the mechanical construction of the two may be so different, and may be so far novel, that each may be patentable." Allis v. Buckstaff et al., 22 0. G. 1705.— Dyek, 1883. 305. Although long flexible tubes had been used for passing gas to an elevator-cab while in motion, that does not prevent the patenting of the combination of a similarly connected electric wire with the enunciator in such a cab. West- ern Electric M'f'g Go. v. ChicagoElectricM'fg Co., 11 Bissell, 427.— Blodgett, 1882. 806. AVhere the patented improvement con- sisted of a duplication of prior existing parts plu^ a slot, it was held that the change involved invention. Starrett y. Athol Mach. Co. et al., 14 Fed. Rep. 910.— Lowell, 1883. 307. By the court : " The accomplishment of the same result is not an anticipation unless it is done by the same means in substantially the same way." Hall et al. v. Steai-n et al., 15 Fed. Rep. 463.— Wheeler, 1883. 308. Although the edge-rolling of metal gen- erally may be old, yet he who first makes a spring in that way, attaining a special advan- tage thereby, is entitled to a patent therefor. Miller ct al. v. Pickering, 16 Fed. Rep. 540.— McKennan, 1883. 309. The patented invention being an edge- rolled spring having one edge thicker than the other, the invention was not impugned by find- nsrVENTION— SUFFICIENCY OF. 457 ing in prior existence bars which might have heen rolled into springs having one edge thicker than the other. — lb. 310. The patented invention was a tip for the insoles of shoes made of muslin, stiffened with shellac, and pressed into shape by dies. Leather tips were old ; vulcanized rubber tips were old ; and it was old, as to other things, to press mus- lin into shape by dies. The patented tip was greatly appreciated by the trade. Patent sus- tained. Shuter et al. v. Dams et al., 16 Fed. Rep. 564.— Wallace, 1883. 311. Where the patented thing was closely approached by the prior art, but complainant offered evidence of practical tests to show prac- tical advantages, and defendant met the evidence only by theories, the complainant's improvement was held patentable. Crosby Steam Gauge & Valve Co. v. Aslicroft M'fg Co., 17 Fed. Rep. 85.— Lowell, 1883. 312. Although inere change of location does not present a patentable improvement, yet changes of location may sometimes require the employment of inventive skill to attain the opera- tion of the parts in the new location. Moffett v. Camnaugh, 17 Fed. Rep. 336.— Shipman, 1883. 313. When a machine combines the merits of two single prior machines, and has the advan- tage of convenience, simplicity, and cheapness, there is sufficient invention present to support a patent. Mfield v. Whittemore, 17 Fed. Rep. 513.— Lowell, 1883. 314. By the court : " If a certain macliine or organization is capable of a certain use only under unusual, and, as I may say, abnormal conditions, so that a person of skill and knowl- edge in the art to which it relates, or a person using the machine, would not, unless by acci- dent, discover that it was capable of such mode of operation, it shall not be considered an antici- pation of a machine or organization which is founded upon such mode of operation." Am. Sell Telephone Co. v. Dolbearei al., 17 Fed. Rep. 604.— Lowell, 1883. 315. Although coal-carts were old, and chutes for conveying the coal from the cart were old, in cases where a shovel was used to transfer the coal from the cart to the chute, yet a combina- tion of cart and chute dispensing with a shovel. Is patentable. Wood et al. v. Packer, 17 Fed. Rep. 650.— Nixon, 1883. 316. A patent being for an adjustable support to prevent the bottoms of trays from sagging, it was held to be a " narrow invention, but patent- able." N. Y. Orape Bagar Co. v. Buffalo Q. Sugar Co. et al., 31 Blatch. 519. —Shipman, 1883. 817. Although " a metallic tube or frame with a neck and flanges for fastening purposes has been used for a considerable time uponTiarnesses as well as upon articles of tin ware, ' ' a combi- nation of such devices, with a box-loop for har- nesses, is a patentable invention, Brighton v. Wilson, 18 Fed. Rep. 378.— Colt, 1883. 318. The patent under consideration being foi improvements in scoops, the court said : ' ' The first scoops, so far as shown, were struck up, by hammering, in one piece, except the handle. Then they were made of sheet metal cut into shape in one piece, bent up, and fas'tened at the joints, ready for the handle. They had oval surfaces, and would not rest firmly and hold their contents securely when set down. The orator's scoop was made from one piece of sheet metal, cut into such jjeculiar shape that when bent up and fastened it had a flat surface on which it would rest when set down, full or partly full, so as to hold the contents securely ; and the acting parts were well shaped and strengthened in making them of this form. To fix upon the necessary jDattern for the sheet metal to produce this result, must have required calculation and experiment beyond the practice of mere mechanical skill and good workman- ship. It seems to be entitled to be classed as in- vention." Baiiis\. Fredericks, 31 Blatch. 556. —Wheeler, 1884. 319. By the court : " A new thing was pro- duced better for some purposes than had been produced before, although many skilled Work- men had been practising the making of those known before, and making as good as they could without reaching this. He hit upon this while no one else did, although it appears to be easy of accomplishment. This success seems to be within the benefits of the patent law." — lb. 320. An improvement in lanterns being the subject in dispute, the court said : " The differ- ence between the lantern of the second patent and that of the first consists only in a new loca- tion of the hinge and spring-catch, and the em- ployment of a horizontal guide to form the up- per rim of the basket for the purpose of this new location. This change of location seems to have been a very simple thing after it was made ; but, simple as it may have been, it remedied a great difficulty in the lantern of the first patent, and the advantages which it introduced were imme- diately recognized by the public. Others who were actively experimenting in the same field of improvement, failed to discover how readily this change could be made, and what advantages would result by its being made." Adams et al. V. Howard et al., 33 Blatch. 47.— Wallace, 1884. 458 INVENTION— SUFFICIENCY OF. 321. Where the patentee accomplished by a bolt what required three bolts in the prior struc- ture, he was held to have exercised patentable invention. L. S. & M. 8. M. B. Go. v. Nat'l Car Brakes. Co., 110 U. S. 239.— Sup. Ct. 1884. 323. Complainants' patent was for a cluster of cake-pans united to a plate, having an aperture for each pan, by a double-seamed joint, formed from the rim of the cup, turned outward, and the edge of the plate about the aperture turned upward on the upper side of tlie plate. Cake- pans and other similar things had been fastened to plates in other ways, but the patented mode was the better one, and the patent was sustained. BeU et al. v. U. 8. Stamping Co., 33 Blatch. 37. — Whkelek, 1884. 338. The prior art showed welding steel to wrought iron, and rolling .the same. The com- plainant's patented invention was for putting wrought iron in a mould and welding steel thereto by casting it upon the wrought iron. A suiBciency of invention was held to exist. Boyle V. Spauldinget al., 37 O. G. 800.— Nixon, 1884. 834. A patented horse-nail differed from the nails of the prior art chiefly in a hardness that differed in degree at different points in the nail, those of the prior art being equally hard throughout. The patented nail was held to embody patentable novelty. Olobe Nail Go. v-, U. 8. Horse Nail Co., 19 Fed. Rep. 819.— Nel- son, 1884. 325. Where a man takes an existing mecha- nism, uses it for a new purpose, and, in so using it, is required to make adaptations, a sufficiency of invention is present to support a patent. Western Electric Bynamo Mach. Co. v. Arnoux et al., 30 Fed. Eep. 113.— Wallace, 1884. 336. In complainant's patented improvement in friction clutches for hoisting machines, the patentee dispensed with one of the friction cones and flanges found in the prior art, rearranged and simplified the machine, and put the spring where it was needed. ' ' This appears, after it was done, to have been easy to do ; but no one did it before, and it makes a more compact, economical, and useful machine." Mundy v. Lidgerwood M'fg Co., 30 Fed. Rep. 114.— Wheeler, 1884. 337. Where complainant's inventor took a pre-existing lock and bag-handle and attached them to the walls of a bag, so that the walls strengthened the frame at the handles, his patent was held to exhibit a sufficiency of invention. Boemer v. Simon et al., 20 Fed. Rep. 197. — Wheeler, 1884. 338. All of complainant's patented combina- tion, except a certain automatic valve mecha- nism, was to be found in a certain prior patent which showed the valve operated by hand- The automatic valve devices were also old in principle. Their union was held to involve sufficiency of invention to support a patent. Albany Steam Trap Co. v. Feltlumsen et al., 33 Blatch. 169.— Wallace, 1884. 339. The fact that no such device as that of complainants' patentee was in existence or use be- fore that patentee originated the same, although there was a wide necessity for its employment, and the device was of obvious utility, is strong evidence in favor of the presepce of a sufficiency of invention in the patented thing. Patterson et al. V. Buff, 30 Fed. Rep. 641.— Bradley and McKennan, 1884. 330. Where the change that the patentee makes over the prior art was simple but effective, and other intelligent and skilful mechanics working toward the same end had failed to dis- cover it, there is a sufficiency of invention ex- ercised to support a patent. Sewing Mach. Go. V. Frame, 28 O. G. 96.— Butler, 1884. 331. Complainants' patent was for an improve- ment in box-loops for carriage tops. Defendant urged as an anticipation a prior patent for an improvement in gaiter fastenings. The court said that in size, shape, object, position, and mode of operation the gaiter-fastening apparatus was unlike that described in the patent, and would not, as the court thought, suggest the lat- ter to a skilled mechanic, and it therefore held the prior patent not an anticipation. Crandull et al. V. Parker Carriage Goods Co., 88 O. G. 369.— CoxB, 1884. 833. Complainants' patented improvements in closets consisted in a ventilating flue from un- derneath, the operation of which had a tendency to draw fresh air down through the holes in the seat. A prior structure, where the air was ad- mitted below the seat, having some tendency to force the heated air up through the holes in the seat, was held not to be an anticipation. Cot- tier et al. V. Stimson et al., 30 Fed. Eep. 906. — Deadt, 1884. 333. In complainant's patented fire extin- guisher there was a portable cylindrical vessel IDrovided with a flexible hose-tube and nozzle, and in its use a gas was to be generated which would put the liquid contents under pressure, while at the same time the liquid contents were permeated by the gas. In the prior art there was a small portable, water-tight vessel into which atmospheric air had been pumped, so as to put the liquid contents (water and pearlash) under pressure. There was also in the prior art the well-known soda-water fountain, with pro- vision for generating gas inside, but no hose INVENTION— SUFFICIENCY OF. 459 and nozzle and no suggestion of use for fire ex- tinguishing. The patentee was held to have ex- hibited a sufficiency of invention. Ordham, Adm'r, v. Johnston et al., 21 Fed. Rep. 40.— MoRBis, 1884. 334. Complainant's patent was for a trunk fastener. Defendants offered in evidence prior patents for trunk-locks approaching very closely the patented device, and thereof the court said : " I am of the opinion that the Taylor patent ought not to be held invalid because of inven- tions that preceded it, which belong in the trunk-lock class." Sessions v. Romadka et al., 21 Fed. Rep. 134.— Dyek, 1884. 335. Complainants' patent was for covering the entire upper surfaces of a key-board of a piano or the like with a sheet of celluloid to be fastened to the wood with the usual celluloid cement, and afterward sawing out the keys. Previously the keys had been covered with ivory (each sheet separately), and in one instance the entire upper surface of two keys was once cov- ered with a single sheet of ivory ; but this was an exceptional feat, performed with an excep- tionally beautiful and evenly grained piece of ivory. Patent sustained. Celluloid M'fg Co. et al. V. Pratt et al., 22 Blatch. 367.— Shipman, 1884. 336. Electric protection for the outside of houses will not prevent the granting of a legal patent for an adaptation of the same idea to safes. Holmes Electric Protective Co. v. Metro- politan Burglar Alarm Co., 21 Fed. Rep. 458. — Wheeler, 1884. 337. By the court: " The fact that these older devices, which it is now claimed were suscep tible of being modified by mere mechanical skill into a machine in its operation and effect like that shown by the complainant's patent, rested without any such modification until the present patent was promulgated, is quite conclusive proof to me that it required something more than mere mechanical skill to produce what is shown in this patent." Brown M'fg Co. v. Leering et al., 21 Fed. Rep. 709.— Blodgett, 1884. 338. Though the difference between a patent- ed thing and the prior art may be slight, yet if the difference involves a new and valuable re- sult, it is patentable. Hancock Inspirator Co. v. Jenks, 21 Fed. Rep. 911.— Brown, 1884. 339. Large sales of the patented thing by the complainant, coupled with the adoption of the patented thing by defendant, is strong evidence of patentability. — lb. 340. Although devices to be found in the prior art closely approach the patented device, yet, if they are devoid of the feature which gives life and value to the patented thing, there is a suffi- ciency of invention in the patented thing, al- though the change from tjie jsrior art be appar- ently small. Con. Safety Valoe Co. v. Crosby Steam Gauge & Valve Co., 113 U. S. 157. — Sup. Ct. 1885. 341. " Criticism that an invention is so plain that it must be perceived by all, comes with poor grace from those who did not themselves perceive it." McFarland et al. v. Spencer et al., 23 Blatch. 155.-Coxb, 1885. 343. Complainants' patented improvement was a metal tenon for blind-slats consisting of a metal trunnion attached to a sheet to be affixed to one side of the slat. The prior art showed such a trunnion carrying a tenon fitting on the end of the slat ; the prior art also showed such a trunnion with a forked strip embracing the end of the slat ; the prior art also showed a shutter repaired with a tenon like complain- ants'. The improvement was, however, held patentable.— /i. 343. The patented improvement was a canopy for a child's carriage which could be set both for- ward and backward, and was held to exhibit sufficiency of invention over a prior structure, which did this imperfectly. Parker, Trustee, v. Stoio, 23 Fed. Rep. 253.— Shipman, 1885. 344. Complainant's patented fabric for col- lars and cuffs consisted of outer sheets of cellu- loid, and an interlining of textile or fibrous ma- terial. The suggestion had been made that celluloid in a liquid state might be coated upon textile fabrics, but that suggestion when carried out, was useless for the purpose in question, and was held not to anticipate the invention. Celluloid M'fg Co. v. Crolitlvion Collar & Cuff Mfg Co., 31 O. G. 519.— Coxs, 1885. 345. " A century of Reiss would never produce a speaking telephone by mere improvement in construction. ' ' Am. Bell Telephone Co. v. Molec- ular Telephone Co., 23 Blatch. 353. — AVallace, 1885. 346. Complainants' patent was for an im- provement in a device for packing shoe-shanks upon a table after leaving the cutting and form- 1 ing dies. Some similar contrivances were found in prior printing-presses and the like, but as they would not do the work of the device of complainants' patent, they were held not to an- ticipate that patent. Jenkins et al. v. Chirney, 23 Fed. Rep. 898.— Colt, 1885. 347. A barb for wire fences consisting of a serrated wheel being old, and another barb like the hub of a wheel with spokes being old, and another barb consisting of a diamond-shaped 460 INVENTION— SUFFICIENCY OF. plate being old, it still required invention to de- vise that form of barb which consists of a wire pointed at both ends and twisted around the wire.^ Washburn & Moen M'fg Co. et al. v. Onimell Wire Co. et al., 24 Fed. Rep. 23.— Brewer, 1885. 348. Where it is doubtful whether an alleged improvement embodies invention,* the fact that it is of great utility is fair matter for considera- tion in determining the fact of patentability. And where the comparison of the improvement with its predecessors shows it to have been the successful thing, that is conclusive evidence of patentability. — lb. 849. The invention patented to complainants consisted in subjecting steel wire springs of con- ical form to ' ' spring temper heat — about six hundred degrees." for restoring the wire to its normal condition by producing a complete homo- geneity of the metal. Substantially such a proc- ess had been used for tempering metal previ- ously, but the court sustained the patentability of the invention for the said purpose. Garey et al. V. Wolff et al., 23 Blateh. 92.— Wheeler, 1885. 850. A patent in suit was for a construction of collars and cuffs. The prior art showed a collar or cuff made of two layers of muslin, with the wearing edges folded to prevent unravelling and attain improved appearance, all cemented together by a mixture of starch, spermaceti, and indigo. The improvement of said patent was for a collar or cufE made of a single thickness of celluloid or other pyroxyline material, with the edges turned over upon itself and cemented down to form a hem. The patent was held to exhibit sufficiency of invention. Celluloid M'fg Co. et al. V. Ghrolithion Collar & Cuff Co. et al., 32 O. G. 383.— Wheeler, 1885. 351. A patented baby- jumper differed from the prior art principally in a backward curve of the suspension rod to avoid contact with the child, and this difference was held to be suffi- cient to support the patent. Spooner v. Dorn et al., 24 Fed. Rep. 700.— Blodgett, 1885. 852. In a patented automatic fire-extinguisher the gist of the improvement consisted in locat- ing the seal on the outer end of the water con- duit. This, resulting in practical advantages, was held sufficient invention to support a patent. Defendant, in making this seal, used a semi- spherical cup in place of the patented flat cup, and its flanges pressed into the pipe instead of outside thereof ; defendant was held to infringe. Parmlee et al. v. A. Burritt Hardware Co., 24 Fed. Rep. 735.— Shipman, 1885. 353. For an example of an arrangement of leaves in a pocket check-book held patentable over former arrangements, and of a variation by defendant held to be an infringement, see--. Norrington v. Merchants' Nat' I Bank, 25 Fed. Rep. 199.— Colt, 1885. 354. The patent in suit being that to Dr. Adams for nickel-plating, it was held that Dr. Borttgers's prior laboratory experiments— his process never having gone into practical use — did not constitute an anticipation of the patent. United Nickel Co. v. California Electrical Works, 25 Fed. Rep. 475.-Sawtek, 1885. 355. The patent in issue was for collars and cuffs made from celluloid. The celluloid in sheets had previously been produced. A num- ber of difficulties were overcome by the patentee in making the collars and cuflfs, the court say- ing : " We do not regard this as a great inven- tion, but we do consider it a very useful one ;'' and the patent was sustained. Celluloid M'fg Co. V. Chrolithion Collar <& Cuff Co., 25 Fed. Rep. 482.— CoxE, 1885. 356. By the court : " A company of sports- men enter a copse in search of game, a bird arises, seen plainly by a few ; the others catch but a passing glimpse. Several shots are fired ; some wide of the mark, others dangerously close. The pursuit begins and continues with varying fortune. The coveted bird is wounded by one of the sportsmen, and is almost within the grasp of another, but he alone who finally brings home the game is entitled to place it in his pouch." — lb. 357. The patented machine was for pouncing hat-bodies, and the claim in issue was for the combination of a rotary pouncing cylinder with a vertical supporting horn, wherein the horn was used to support the whole body during the operation of pouncing. A prior machine had a similar horn, but longer. The patent was sus- tained. Nat'l Hat-Pouncing Mach. Go. v. Tlwm et al, 25 Fed. Rep. 496.— Colt, 1885. 358. Complainant's patented machine was for pouncing hats. A prior machine for polishing boot-heels was similar, and, although it could possibly be used for hat-pouncing, it was not shown that it could be so used satisfactorily, and the patent was sustained. — lb. 359. Complainants improvement as expressed in the claim was : " Fire or hydraulic hose of more than one ply composed of cotton, linen, or other analogous njaterial, woven whole in a cylindrical or expanded form, with two or more weft threads interwound and packed with the woof (warp) threads, in concentric helical coils, one with another, and without any short bends, thus possessing substantial uniform strength and INVENTION— SUFFICIENCY OF. 4C1 a uniform appearance around its entire body, substantially as described." Of this the court said : " It required invention not of a high order to accomplish this, and the complainant is entitled to the benefit of all good results that have followed such a combination of old instru- mentalities. That this is considerable is evi- denced by the fact that fire-hose thus constructed has driven all the older forms from the market. ' ' Beed v. Street, 34 O. G. 339.— Nixon, 1885. 360. A gas-burner made of insulated material was old, but was not used in an electric light- ing system. The patented improvement consist- ed in making a gas burner for an electric lighting system of the same material, and providing a shoulder as a support for the conductors. The improvement was held to exhibit patentable in- vention. Birdaeye et al. v. Heilner et al., 26 Fed. Rep. 147.— Wallace, 1885. 361. Complainant's patented machine consist- ed in the adaptation of a mowing-machine to a boat for the purpose of cutting grass, weeds, and the like, under water. A prior patent showed a common scythe-blade dragged under water at the stem of a boat ; another patent showed the adaptation of a mowing-machine to cutting grass and weeds along the side of a railroad track by attachment to a car. Another patent was for a pile-cutting machine showing circular or recip- rocating saws working under water. Complain- ant's device was held to exhibit patentable in- vention. Pipers. SJiedd et al., 26 Fed. Rep. 151.— Blodgbtt, 1885. 862. The patentee's improvement in a fare- register had a tell-tale hand, which, when set with the trip-hand at zero, moved with it, indi- cating the true number of fares registered, and could not be set back to zero unless the trip- hand were also set there, and which, when the trip-hand was set only a part of the way back to zero, remained at the place where it stopped, thus indicating where the trip-register was start- ed and showing any attempt to cheat. A prior thermometer had a hand on a dial to indicate the highest and lowest temperatures, and a steam- gauge had a similar hand. In neither the ther- mometer nor the steam gauge was there the combination of a tell-tale hand with a trip-reg- ister required to be set to zero at each trial. The fare-regist* was held to involve patentable invention. Railway -Register M'fg Co. v. 8tev- enth Ave. Railroad Co., 34 O. G. 921.— Wheel- er, 1886. 363. Rotating moulds were old, the object of the rotation being the exertion of the centrifugal force on the molten material. A later inventor used the rotating mould not for the purpose of the exercise of this centrifugal force, but for the purpose of depositing the molten metal in sub- divided portions intermittently so as to allow gases to escape, and thus avoid blow -holes. The later invention was held patentable. Adams et al. v. Bridgewater Iron Co. et al., 34 O. G. 1045. —Colt, 1886. 364. The feature of the patented invention in complainant's patent for a kerosene stove con- sisted in holding the chimneys between the up- per and lower plates, so that the lower plate rested directly over the burners, and, as a general rule, contained the cones of the burners of the kerosene lamps while the upper plate furnished facilities for holding the cooking utensils. Va- rious prior devices approached this patented con- struction, but the court said: "It may seem now to have been but a small matter to fasten the chimneys between these two plates, but I gather from the proofs that it marks the point between failure and success in this class of de- vices." Adams & Westlake M'fg Co.v. Rath- bone et al., 26 Fed. Rep. 262.— Blodgbtt, 1886. 365. " It is quite common for those who are appropriating the results of another's labor or inventive genius to attempt to belittle the device so appropriated, and insist that it required no exercise of the inventive faculty to produce it. ' ' —lb. 366. For an example of different devices in the prior art held not to anticipate complainant's patented door-check, see — . Norton Boor- Check & Spring Go. v. Elliot Pneumatic Boor- Check Co. et al., 26 Fed. Rep. 320.— Colt, 1885. 367. In a patented bottle-washer there was or- ganized for the first time the whole group of in- strumentalities going to make a practical and complete bottle-washing machine. This group consisted of a water-supply-pipe, a brush or scrap- er rotated at the end of a shaft, and having the capacity of compression and expansion, a fun- nel-shaped mouth-piece, against which the neck of the bottle was to be placed, and a sleeve into which the brush was withdrawn and which would rotate with the brush when not in use, thus saving it from wear. Prior patents showed some of these devices, but in none of them were found the sleeve within which the brush was withdrawn and rotating with the brush, so as to protect it from wear. The patent was sustained. Hoyt etal. v. Slocum et al., 26 Fed. Rep. 329.— Colt, 1886. 368. One McBurney took a patent for a pack- ing for stuffing-boxes. The improvement of complainant's patentee consisted in adding to McBurney's packing an elastic packing or 463" INVENTION— SUFFICIBISTCY OF. cushion of vulcanized india-rubber, which not only rendered the whole more compact, and more elastic, but being compressed between the fol- lower and the sides of the stuffing-box, acted as a spring to hold the packing continuously against the piston-rod, thus makirig a tight joint, which had not been attained under the McBur- ney invention ; and the improvement was held patentable. N. Y. Belting & Packing Co. v. Magowan et al., 34 O. G. 1159.— Nixon, 1886. 369. " Whether the thing produced is due to the genius of the inventor or to the mechanical skill of a workman is often a difficult question to determine. The line between them is not al- ways clearly drawn. Invention indicates genius and a production of a new idea. Mechanical skill is applied to an idea and suggests how it may be modified and made more practical, and . . . , such mere modification is not patentable unless some new and-useful result is secured." 370. Where the sufficiency of an alleged in- vention is under discussion, it is a fact not to be overlooked, and has much weight, that the pat- ented thing went at once into such extensive public use as almost to supersede all other arti- cles of the kind. " Such a fact is pregnant evi- dence of its novelty, value, and usefulness, and accounts for the defendants' infringement." — lb. 371. Combinations are "patentable where a new and useful result is produced by their joint action, or an old result in a cheaper or other- wise more advantageous manner. . . . An old result may be sufficient when it is produced by the combination in a cheaper or otherwise ad- vantageous manner. " Railway Reg. M'fg Co. V. North Hudson County R. R. Co. et al., 26 Fed. Rep. 411.— Nixon, 1886. 373. Although a machine prior to the patent- ed machine, and used for a different purpose than the patented machine, may contain mech- anism similar to that of the patented machine, yet if it falls short of the capabilities of the pat- ented machine it is not an anticipation thereof. Hartford Mach. Screw Co. v. Reynolds et al., 26 Fed. Rep. 538.— Shipman, 1886. 373. Complainant's invention was for a piston or bucket-pump having a base or inwardly ex- tending flange cast therewith, and having a barrel whose length was not greater than the diameter thereof. There were prior pumps in which the diameter of the barrel was greater than the length, and there were also prior pumps with an inwardly extending flange at the bottom of the barrel, but in no prior pump was there to be found the inwardly extending flange of such I construction that it could be used wholly for the j base of the pump, and thus do away with any j frame- work. Complainant's patent was sus- I tained. Russell v. Laugklinetal., 26 Fed. Rep. '699. -Colt, 1886. 374. Complainant's patent for making parti- colored glassware consisted first in making amber-colored glass by the use of the known " gold ruby compound," then reheating a por- tion of it, and in that pbrtion developing a ruby color. In the prior art there was a compound for an opal shade due to the mixture of bone with the glass. In the prior art there was an- other article of pink and white, but what the coloring agent was did not appear. In the old jKocess of making amber-colored glass it was sometimes found that a portion of the article, which had escaped in some degree the reheating process, retained the amber color. The improve- ment was held patentable. Libbey v. Mi. Wash- ington Class Co. et al. , 36 Fed. Rep. 757. — Colt, 1886. 375. For an example of devices in the prior art, approaching, but held not to anticipate a claim for an improvement in permutation locks, see — . Yale Lock M'fg Co. v. Sargent, 117 U. S. 537.— Sup. Ct. 1886. 376. Although the old fencing mask belonged to the prior art, a base-ball mask with head-rest and chin-rest is a patentable invention. Thayer V. Spaulding, 27 Fed. Rep. 66. — Blodgett, 1886. 377. " A great majority of patents are for im- provements in old and well-known devices, or on patented inventions. Changes in the con- struction of an old machine which increase its usefulness are patentable. ... So a new com- bination of old devices, whereby the effectiveness of a machine is increased, may be the subject of a patent." Cantrell et al. v. Wallick, 117 U. S. 689.— Sup. Ct. 1886. 378. " Two patents may both be valid when the second is an improvement on the first, in which event if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the other's con- sent. " — lb. 379. For an example of a mode of counter- balancing a drill-bar somewhat approximated in the prior art, but having substafttial advantages, and therefore held patentable, see — . Mies Tool Works Y. Betts Mach. Cj., 27 Fed. Rep. 301.— "Wales, 1886. 380. " It has always been the law that a pat- entable invention, although new and useful, must be the result of something more than, and different from mere mechanical skill ; but the INVENTION"— SUFFICIENCY OP. 463 existence of novelty and utility in a patented thing was potent in the determination of the question of its patentability. " Celluloid M'fg Co. V. Oomstock & Clieney Co., 27 Fed. Rep. 358.— Shipman, 1886. 381. The decision in HolUater v. Benedict judgment thereon for any sum above the amount found by the verdict as the actual damages sustained, ac- cording to the circumstances of the case, not ex- ceeding three times the amount of such verdict, together with the costs. Sbc. 4931. The several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions ac- cording to the course and principles of courts of equity, to prevent the violation of any rights se- cured by patent, on such terms as the court may deem reasonable ; and upon a decree being ren- dered in any such case for an infringement, the complainant shall be entitled to recover, in ad- dition to the profits to be accounted for by the defendant, the damages the complainant has sus- tained thereby ; and the court shall assess the same or cause the same to be assessed under its direction. And the court shall have the same power to increase such damages, in its discretion, as is given to increase the damages found by verdicts, in actions in nature of actions of tres- pass upon the case. Cases. 1. A state court has no jurisdiction of a suit brought for infringement of a patent. Parsons V. Barnard, 7 Johns. 144, per curiam, 1810. 2. Under the patent acts as they were in a. d. 1811, a United Slates circuit court has not juris- diction of an equity infringement cause between citizens of the same State. Livingston v. Van Ingen, 1 Paine, 45.— Livingston, 1811. 3. The Circuit Court has appellate jurisdiction in proceedings for repeal of patent — under Sec- tion 10, act of 1793 — where the matter in dispute exceeds $300. [Jud. Act, 1789 ; ch. 20, Sec. 22.] Stearns v. Barrett, 1 Mason, 153. — Story, 1816. 4. Whether the complainant's patent is good and valid is not a question for the equity side of the court, but belongs to a court of law, with right of trial by jury. Sulli'Dap, v. Bedfidd et al., 1 Paine, 441. — Thompson, 1835. 5.' A patent is granted upon evidence and proofs laid before a public officer upon which he decides, and the grant of the patent is prima, fa^ie evidence that the proofs have been made and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs. It is not necessary for the pat- ent to contain any recitals that the prerequisites to the grant have been duly complied with. Philadelphia & Trenton Railroad Oo. v. Stimp- son, 14 Peters, 448.— Sttp. Ot. 1840. •6. The mere fact that a contract pertains to a patent does not give a federal court jurisdiction. Burr V. Oregory, 2 Paine', 426. — Thompson, 1838. 7. " The act of February loth, 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 term or by necessary implication renders that jurisdiction exclusive. " Burrall v. Jewett, 3 Paige, 134. — Walworth, 1830. 8. A state court has no jurisdiction of inter- fering patents. Oibson v. Woodwortli, 8 Paige, 133.— Walworth, C.,1840. 9. Although the infringing act may be outside the jurisdiction of the court, yet if the court has jurisdiction of the person, the latter may be re- strained from infringing. Boyd y. McAlpin, 3 McLean, 427.— McLean, 1844. 10. The validity of a patent may be determined in a state court when that question comes in collaterally. Rice v. Hotchkiss, 16 Conn. 409. — WlLHA.MS, 1844. 11 . " Where a controversy arises wholly under a contract of license, and the parties are citizens of the same state, the federal court cannot take jurisdiction. But where the complainants set up their right under a patent and allege infringe- ment, the court takes jurisdiction." Brooks et al. V. Stolley, 3 McLean, 523.— McLean, 1845. 13. Where A has contracted with B to assign to B the former's patent, a federal court does not acquire jurisdiction of a suit to enforce such contract. Nesmitli et al. v. Calmrt etal., 1 W. & M. 34.— Woodbury, 1845. 13. Where there are different' defendants, and the subject-matter in controversy does not give a federal court jurisdiction, it will retain juris- diction as to such defendants as reside in a different state from complainants. — lb. JUEISDICTION. 475 14. Objection to the jurisdiction of a federal court, on account of the subject-matter of the issue, comes too late after pleadings are filed and evidence is published. — lb. 15. Though complainants' right to a patent in question may rest in contract, yet if an injunc- tion is sought against defendants from an in- fringement of such a patent, a federal court can take jurisdiction. — lb. 16. " The question of the regularity of the proceedings in petitioning for and obtaining the patent, and that of the correctness of the judg- ment of the office in awarding it, are not ma- terial, and cannot be inquired into." Wilder v. McCormick, 3 Blatch. 31.— Bbtts, 1846. 17. Where there were joint owners under a patent, with an agreement binding one owner not to manufacture under the patent, and he did manufacturci a state court was held to have no jurisdiction to grant an injunction, for tlie real question was not infringement. Parkhurst v. Kimman, 2 Halstead's Chancery, 600.— Hal- stead. 1847. 18. " In most questions pending in courts of Chancery, or on the equity side of courts of law, a 'trial by jury has never been usual in this coun- try or abroad. The seventh amendment to the Constitution secures that trial only in cases ' at common law.' " Woodworih et al. v. Bogers et al., 3 W. & M. 135.— Woodbury, 1847. 19. "In equity where the case is clear and without reasonable doubt, where the bill states a clear right to the thing patented, which, to- gether with the alleged infringement, is verified by affidavit, and where the plaintiff has been in possession of it, by having sold or used it in part or in whole, the court will grant an injunc- tion and continue it till the hearing or further order, without sending the plaintiff to law to try his right." Motte v. Bennett, 2 Fish. P. C. 643.— Wayne, 1849. 20. " Not even the direct assent of the parties can confer jurisdiction or render the judgment of a tribunal, in a matter over which it has by law no cognizance, effectual." Dudley v. MayJiew, 3 Comstock, 9. — Strong, 1849. 21. State courts have no jurisdiction of causes wherein the validity and infringement of patents are directly in issue. — lb. 22. By the court: " The preventative interpo- sition of equity is very often the only effective resort of a meritorious patentee ; and where the facts of the case are not controverted, I am by no means satisfied that it is not the Safest for both parties." Wilson v. Barnum, 1 Wall. Jr. 147.— Kane, 1849. 33. An equity action for an infringement of a patent may be maintained in any circuit court within and for any district where the defendant is found and served with process. Allen v. Blunt, 1 Blatch. 480.— Nelson, 1849. 34. A bill in equity to set aside a contract of license does not come within the jurisdiction of a federal court simply because the license refers to a patent right. Wilsons. Hanford et al., 10 Howard, 99.— Sup. Ct. 1850. 25. " The jurisdiction of the circuit courts embrace ... all cases, both at law and in equity, arising under the patent laws for infringement of letters-patent, without regard to the citizen- ship of the parties or the amount in contro- versy." Bay V. Newark India Jtubber M'fg Co., 1 Blatch. 638.— Nelson, 1850. 36. " In order to give jurisdiction to the cir- cuit courts of the United Slates, the party de- fendant must be an inhabitant of the district in which the suit is brought, or he must be found within it at the time of the service of the origi- nal process ; and this, whether suit be com- menced by writ, summons, or attachment, or whatever may be the nature or character of the process used. No exception is found in the act of Congress providing for the commencement of suits in these courts, nor in the judicial exposi- tions given to it. ' ' — lb. 37. The defendant ^vas a New Jersey corpora- tion, having an office in New York City. Ser- vice was made upon the president, who hap- pened to be in that city. Plaintiff was a resi- dent of New Jersey. The suit was brought in the Southern District of New York. It was held that the court was without jurisdiction in the case, the court saying ; " Neither the levy- ing of the writ of attachment upon the goods of the defendant in this district, nor the service of the summons upon their president within it, or both together, have the effect to give jurisdic- tion to the court in this case against defendants ; and further, . . . according to the true construc- tion of Section 11 of the Judiciary Act of 1789, the court would have no jurisdiction in suits in- stituted against foreign corporations, even in cases whei'e the state practice, if adopted by it, would authorize the institution of such suits by the attachment of their goods found within the jurisdiction. " — lb. ■ 38. In a suit for an injunction, based upon a contract relating to a patent, a federal court may have jurisdiction by reason of the citizenship of the parties— in that case, the suit to be brought in the state of which one of the parties is a citi- zen — but it does not take jurisdiction, because the subject of the contract is a patent. Oood- year v. Day, 1 Blatch. 565.— Nelson, 1850. 476 JUEISDIOTION. 29. Where the court has jurisdiction of the persons of the defendants, It may restrain Ihem from infringement of a patent, outside the ter- ritorial jurisdiction of tlie court. '^iUon v. Sherman et al., 1 Blatch. 536.— Nelson, 1850. 30. A state court cannot enjoin against an infringement suit in a federal court. Kendall ct al. V. Winsor, 6 R. I. 453.— Ames, 1850. 31. A federal court sitting in equity has ju-. risdiction of a patent cause irrespective of the right of the patentee to an injunction, or of his demand for one. Nevins v. Johnson et al., 3 Blatch. 80.— Bbtts, 1853. 32. A provisional injunction had issued against the respondent, complainant and his sureties giving bond conditioned to pay re- spondent any damages he might suffer by rea- son of that injunction if finally determined not to be rightful. The bill was subsequently dis- missed and injunction dissolved ; defendant moved the court to refer to a master the ques- tion how much damages the respondent had suffered. The court held that, "aside from positive legislation, a court of equity does not afford a remedy on such bonds. ' ' Merry field v. Jones, 3 Curtis's C. C. 306. -Curtis, 1855. 33. "Where respondents are residents of another jurisdiction and carry on there the alleged in- fringing business, " they are consequently be- yond the process of injunction, and the issuing of it would be inoperative and useless. ' ' Good- year et al. V. Chaffee etal., 3 Blatch. 268.— Nel- son, 1855. 34. The question of the validity of the patent cannot be tried even collaterally in a state court. Oliver v. Fennel, 4 Maine, 430. — Rice, 1855. 35. " The bill needs only to pray discovery for the purpose of account, and it will be sus- tained for the account only. ' ' Sickles et al. v. Gloucester M'fg Co., 1 Fish. P. C. 232.— Gkier, 1856. 36. " The courts of the United States have their jurisdiction over" patent cases " by stat- ute, and do not exercise it merely as ancillary to a court of law." — lb. 37. Where a, bill in equity is brought for in- fringement of a patent, and pending the trial the patent expires, the case may and will be proceed- ed with. — lb. 38. In a patent case, ' ' the bill need only pray for the discovery for the purpose of account, and it will be sustained for the account only. " Blank (or Sickles et al.) v. M'fg Co., 3 Wall. Jr. 196.— Gbibe, 1856. 89. The courts of the United States have their jurisdiction over patent causes by statute, and do not exercise it merely as ancillary to a court of law. — lb. 40. "The power of a court of te«i to compel a defendant to permit the agents of the plaintiff to enter on his property for the purpose of fur- nishing evidence of a trespass or other tort, though sometimes assumed by courts, when no objection is made, cannot be admitted. ' ' Parker V. Bigler et al., 1 Fish. P. C. 285.— Gribr, 1857- 41. B brought suit against K in an action of assumpsit to recover for the use of B's patent by K. It was held that this was in effect such a suit as must be brought in a federal court. Bat- tin V. Kear, 3 Phil. 301.— Sharswood, 1857. 42. Where the production and establishment of the patent is necessary to lay foundation for the plaintiff's case, a state court has no juris- diction. Tomlinson v. Battel, 4 Abbott's Prac- tice, 266.— Dder, 1857. 43. Section 17 of the act of 1836, authorizing courts of equity " to prevent the violation of the rights of any inventor," includes assignees as well as inventors. Jenkins v. G-reenwald, 1 Bond, 136.— Leavitt, 1857. 44. " If a patentee parts with the whole right secured by his patent, either for cash, or upon the purchaser's entering into a covenant to pay him a certain sum of money, or to do certain other things, the patentee has, after such a sale, no right vested in him secured by any act of Congress. A suit to enforce the covenants would not he a case arising under a law of the United States. The use of the whole thing sold cannot he a violation of any rights of the patentee se- cured by the laws of the United States, so long as the deed of sale remains in full force, for he has parted with all such rights. And when a portion of the right is parted with, the rule must be the same as respects such portion." Good- year et al. V. Union India Rubber Co. , 4 Blatch. 63— Ingersoll, 1857. 45. "Jurisdiction is not given to the Circuit Court, by any patent act, of all suits where pat- ent rights are the subject of inquiry." — lb. 46. A bill to enforce a specific execution of a contract relating to a patent is not one of which a federal court can take jurisdiction simply be- cause the contract relates to a patent. Dean v. Mason et al, 30 Howard, 198.— Sup. Ct. 1857. 47. In the case last referred to it is not ma- terial as regards jurisdiction that a court grant- ing an injunction orders a bond in excess of $3000.-/6. 48. Where, between the time of filing the bill and the hearing, the patent in suit expires, an account can he ordered and other relief granted, though, on account of the expiration of the pat- JUEISDICTION. 477 ent, an injunction, to restrain further use, can- not issue. ImXay v. Norwich & Worcester R. B. , 4 Blatcli. 237.— Ingersoll, 1858. 49. Where the validity of a patent comes in question collaterally, a state court may enter- tain the action. Lindsay et al. v. Roraback ei al., 4 Jones' Eq. 124.— Piebson, 1858. 50. State courts have jurisdiction to inquire into the validity of patents when such question comes in collaterally, and they have jurisdiction to enforce contracts the subject-matter whereof is patents. Slemmer's Appeal, 58 Penn. St. 155. — Shokswood, 1868. 51. A state court has jurisdiction to try the validity of a patent when that question comes in incidentally. Sherman v. Ghamplain Trans- portation Co., 31 Vt. 162.— Redfield, 1858. 52. " It is clearly no ground of jurisdiction, under the patent law, tha{ the contract between the parties relates to a patent right. But if an infringement is proved, jurisdiction is conferred ; and, having power to protect the rights of a party under a patent, the court will take cogni- zance of other matters, as incidental to the in- fringement." Bloomer V. Oilpin et al., 4 Fish. P. C. 50.— Leavitt, 1859. 53. Although parties have a constitutional right of trial by jury in actions at. common law, such a trial in a suit in equity depends upon the discretion of the court. Ely v. Monson & Brim- field M'fg Co., 4 Fish. P. C. 64.-Sprague, 1860. 54. " It is plain that a patentee, whose inven- tion is only valuable because used by all who pay a license fee, and who suffers no other wrong than the detention of such fee, has fixed his own measure of compensation, and needs none of the remedies which it is the duty of the chancellor to give for his protection. An injunction would do him no good ; an account is not wanted ; and the only remedy to which he is entitled being a judgment for a given sum of money, with inter- est, a court of law is his proper resort, where also he may recover a penalty to the extent of treble damages, if the judge sees fit to infiict it. ' ' Livingston et al. v. Jones et al., 3 Wall. Jr. 330.— Grier, 1861. 55. "An account cannot be required unless where a knowledge of the profits made by the infringer is necessary to a just determination of the controversy. ' ' — lb. 56. " Although the statute gives original cog- nizance of patent controversies equally to courts of equity as to courts of law, and consequently the chancellor may decide a controversy as to infringement without requiring a previous ver- dict in a court of law, yet it does not follow that all distinction, as to remedies granted by each tribunal, is to be abolished ; a court of law can- not issue an injunction, nor a court of equity take jurisdiction to enforce a penalty, or merely punitive damages. Each court will give the remedy peculiar to its own functions. The remedies of a court of Chancery are by injunc- tion and account ; penalties and vindictive dam- ages may be recovered only in courts of law. ' ' —Lb. 57. " Where the measure of damages is a cer- tain sum, and does not require an account of profits, the peculiar jurisdiction of a chancellor is not needed for that purpose. The remedy by injunction is neither necessary nor proper to en- force the payment of money. ' ' Sanders v. Logan et al., 9 Am. Law Reg. 475.— Grier, 1861. 58. " The circuit courts of the United States have jurisdiction of controversies arising under the patent laws by direct grant from Congress. They do not merely act as ancillary to a court of law, and therefore do not require the patentee to establish his legal right in a court of law and by the verdict of a jury. "— /i. 59. Threatening to bring suit for infringement, with no basis for the same, gives right of action ; a state court has jurisdiction thereof. Snow et al. V. Judson, 38 Barbour, 210. — Johnson, 1862. 60. " The power conferred on the United States Circuit Court to entertain bills in equity in controversies arising under the patent act is a general equity power, and carries with it all the incidents belonging to that species of juris- diction. The power conferred not only enables the court to decree a final remedy, but to take care that the subject of the controversy shall not be rendered valueless pending the litigation. " Potter et al. v. Dixon et al., 5 Blatch. 160. — Nelson, 1863. 61. The jurisdiction of the Court of Claims does not embrace a case where a Government subordinate infringes upon a patent upon his own motion and authority. Pitcher v. United States, 1 Nott & Hunt, 7.— Casey, 1863. 62. " Where the United States are plaintiffs, or an alien is a party, or the suit is between a citizen of the state where the suit is brought and a citizen of another state, the circuit courts of the United States have original cognizance, con- current with the courts of the several states, of all suits of a civil nature at common law or in equity, where the matter in dispute exceeds, ex- clusive of costs, the sum or value of $500." Eeekers v. Fowler, 2 Wall. 128. -Sup. Ct. 1864. 63. " No state court can adjudicate on the question of the violation of a patent right. Ques- tions touching these rights may, indeed, inci- 478 JUEISDICTION, dentally arise in the state courts, and be decided by them." Bead et al. v. Miller et al., 3 Bis- sell, 12.— McDonald, 1867. 64. Under Section 17 of the act of Congress of July 4th, 1836, the federal courts have full jurisdiction of patent causes in equity, and full power to grant injunctions. Ooodyear et al. v. ffuUihen etal., 2 Hughes, 492.— Jackson, 1867. 65. " An inventor may bring an action at law against parties infringing his patent, and the court has power to treble the damages awarded by the jury, or, if he prefer to do so, he may in the first instance seek redress in equity, without having established his right at law ; and the court is authorized to inhibit and restrain the further infringement of the patent, by writ of injunction, and to grant a decree for the pay- ment of such damages as the patentee may be found to have sustained." — lb. 66. " There at one time prevailed, in the cir- cuit courts of the United States, the idea that the court, as a court of equity, would interfere in aid of a patentee only where his patent was sanctioned by general acquiescence for many years, or had been maintained at law by the ver- dict of a jury who had passed upon the novelty and utility of the invention when called in ques- tion. . . The current of decisions of the last few years has been otherwise ; and . . . courts of several of the circuits have held [and these decisions, too, have been made by the presiding judges of these circuits, who are members of the Supreme Court] that the grant of jurisdiction is as full in equity as it is at law." Hoffheins et al. V. Brandt, 3 Fish. P. C. 218.— Giles, 1867. 67. "A party can sue at law for damages for an infringement, but in equity he can obtain no such damages. His right may be maintained a,nd protected for the future, and an account may be required."— JS. 68. A suit in equity was brought in the United States Circuit Court for the Southern District of New Yorli, against the New York & Hudson River Railroad Company, where some of the acts complained of as infringements occurred in another district. It was held that under the provisions of Section 6 of the act of April 3d, 1818, the court did not have jurisdiction. Sodge et al. V. Hudson Biver B. B. Co., 3 Fish. P. C. 410.— Blatchpord, 1868. 69. Where a Government agent uses a patent- ed improvement oh an arrangement with the patentee that he will await the action of Congress to get his compensation, in the absence of such action, the Court of Claims has no jurisdiction to award such compensation. Shavor et al. v. United States, 4 Nott & Hunt, 440.— Nott, 1868. 70. State courts have jurisdiction of actions for recovery of damages for fraudulent repre- sentations in the sale of patent right. Hunt v. Hoover, 24 Iowa, 231.— Weight, 1868. 71. The Court of Claims has jurisdiction of an action by a patentee against the Government for the recovery of an agreed royalty. Burns v. United States, 4 Nott & Hunt, 113. — Loking, 1868. 72. " It may often happen that the profits of the infringing defendant are much greater than the damages the plaintiff could prove he had sustained ; and, in such cases, it could hardly be said that the plaintiff had a full and adequate remedy at law. In such a case, as, in matters of account, courts of equity possess a concur- rent jurisdiction, in most cases, with the courts of law." Perry v. Coming et al., 6 Blatch. 134.— Hall, 1868. 73. A suit that is brought for an accounting of profits is properly brought in equity. Dibble V. Augur, 7 Blatch. 86.— Blatchpord, 1869. 74. A suit to recover royalties under a license, to determine the right of the licensee, to alienate his interest and the like, is not such a suit on a patent as gives a federal court jurisdiction. Merserole et al. v. Union Pa/per Collar Co., 6_ Blatch. 3D6.— Blatchford, 1869. 75. "A state court has jurisdiction to decree" a " license and agreement to be void and inoper- ative for fraud or any other adequate reason, and the fact that, in the investigation, the state court will be obliged to inquire whether there was anything new In the patents which could operate as a consideration for the license and agreement, cannot deprive the state court of jurisdiction, or conferit on this [federal] court. " —lb. 76. "A state court cannot take cognizance of a suit brought for the infringement of a patent ; nor of a direct suit brought to decree a patent to be void." — lb. 77. ' ' It cannot be contended that every citizen has a right to bring a suit in the Circuit Court of the district where the proper defendant may be found to repeal a patent, for the reason that such suit is a suit arising under a law of the United States. If such right existed under Sec- tion 17 of the act of 1836, the provisions of Sec- tion 16 would be useless. The two sections must be construed together, and the confiding of au- thority, by Section 16, to declare a patent void, in certain specified cases, must be regarded as intended not to confer such authority in any other cases."-/*. 78. Questions of the existence, validity, or construction of letters- patent for inventions when JURISDICTION. 479 arising collaterally in a suit in a state court must be there tried and determined. David v. Park, 103 Mass. 501.— Gray, 1870. 79. Three sewing-machine companies jointly granted a license to a fourth sewing machine company, with the provision that if licenses were granted to another party upon less royalty than the royalty of said fourth party, the royalty of said fourth party should be similarly reduced. Complainant sought decision in a federal court that a certain license to another party was upon a less royalty. The court held that there was no case presented for the jurisdiction of a federal court. Florence Sewing Macli. Co. v. Singer M'fg Co., 8 Blatch. 113.— Woodrupf, 1870. 80. " Suits in equity to recover gains and profits, or actions at law to recover damages for the infringement for letters-patent, may be maintained in a proper case, even after the pat- ent has expired, if the alleged infringement took place during the term for which the patent was granted, and the suit was commenced before the claim was barred by the statute of limitations. Claims of the kind may be barred by the statute of limitations." Howes v. Nute, 4 Fish. P. C. 263.— Clifford, 1870. 81. "Inventors whose improvements are se- cured by letters- patent duly issued may prose- cute infringers of their exclusive rights as well in equity as at law, and all such actions, suits, and controversies are exclusively cognizable in the circuit courts." Hudson v. Draper et al., 4 Fish. P. C. 256.— Clifford, 1870. 82. " Under Section 17 of- the act of July 4th, 1836, ... a party is at liberty to select his forum, although he seeks a recovery of money only, and neither seeks nor requires a discovery or other ancillary or further relief. No language could be employed to declare the jurisdiction of the courts at law and in equity more completely concurrent than is there found, or which would more clearly indicate that the party aggrieved may resort to either." Perry v. Corning et al., 7 Blatch. 195.— Woodruff, 1870. 83. A suit for a foreclosure of a mortgage upon ajjatent may be sustained in a state court. Boston & Fairhaven Iron Works v. Montague, 108 Mass. 248.-MORTON, 1871. 84. State courts have jurisdiction of causes which involve the question of novelty or utility of a patent as a consideration for a promise to pay money. Page v. Dickerson, 38 Wisconsin, 694.— Cole, 1871. 85. Section 6 of the act of Congress of April 3d, 1818, referring to the Northern and Southern Districts of New York, applies solely to those districts, to the end that the Southern District shall maintain jurisdiction only over causes aris- ing in the Southern District. Wheeler v. Mc- Cormick, 8 Blatch. 267.— Woodruff, 1871. 86. The federal courts have jurisdiction to enjoin the use of a patented invention, and for an account of profits by the infringer, notwith- standing an action at law may be maintained to recover damages for infringement. McMilUn et al. V. Barclay et al., 3 Pittsb. 377. — McKennan, 1871. 87. "The Circuit Court may rightfully take cognizance of every controversy arising under the patent laws, and . . where prevention of a violation of the inventor's rights is sought, the equity jurisdiction of the court must be invoked, as alone competent to furnish adequate relief. A court of law possesses no such power ; its remedies afford redress only for past infringe- ment, but no effectual security against future aggressions. ' ' — I b. 88. " Nor is a trial at law a perquisite to the exercise of this jurisdiction. Such trial may be ordered ; but if its allowance were demand- able of right, still the jurisdiction of the court would remain untouched, because, in the end, its result might be adopted or rejected, as the exigencies of equity might require. But it is al- together within the sound discretion of the court to allow or refuse such trial." — lb. 89. " There is a broad distinction between the jurisdictional right to take cognizance of a com- plaint, and a denial of the relief which the com- plainant asks. Although the relief invoked may be refused, it does not follow that it is because the court cannot inquire into the merits of the cause, and adjudge it accordingly. Want of equity does not imply a defect of jurisdiction. But it is only when the court is without power to pass upon the subject-matter of the com- plaint, or to grant the relief sought, that its ju risdiction may be challenged." — lb. 90. Where the defendant resides in another circuit than that in which the suit is brought, and service of process is made upon him while passing through the latter circuit, the court ac- quires jurisdiction of the person of the defend- aiit, and may enjoin him against infringement elsewhere. TJwmpson et al. v. Mendelsohn, 5 Fish. P. C. 187.— McKennan, 1871. 91. A state court has jurisdiction of a case where the question at issue is whether one party agreed to take a patent of another party. Lock- wood V. Loekwood, 33 Iowa, 509.— Cole, 1871. 92. " Where the validity of the plaintiff's pat- ent is put in question by the pleadings in the state court, and the defendant presents such proofs upon a trial as to render it necessary for 480 JUKISDICTION. the court to examine and pass upon conflicting specifications and claims to priority in invention, in order to determine whetlier the plaintiff has such a property in the subject-matter of the grant as to entitle him to the exclusive and un- molested use of it, and ah objection is taken to the jurisdiction of the. court, for that reason the bill must be dismissed, for in such cases the jurisdiction is in the court of the United States exclusively." (This was said in a case where it was sought to restrain the defendant from pub- lishing circulars containing threat of infringe- ment suit.) Honey et al. v. Rubber Tip Pencil Co., 33 N. Y. 522.— Barbour, 1871. 98. A state court has jurisdiction of an action for the enforcement of a contract to assign a patent, and of the question of profits in connec- tion therewith. Binney v. Annam, 107 Mass. 94.— Morton, 1871. 94. " The nature of the Chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant or patent from the Government." MowryY. Whitney, 14 Wall. 434.— Sup. Ct. 1872. 95. The validity of a patent maybe tried by a state court when that issue comes in collaterally. Middlehrook v. Broadbent et al.. 47 N. Y. 443.— Peckham, 1872. 96. The jurisdiction of the Northern and Southern Districts of New York are kept sepa- rate by Section 6 of the act of April 3d, 1818. Complainant brought a suit against the Erie Railway Company in the Southern District. The infringing device being upon engines made and largely used in the Northern District, the Court held that it had authority to enjoin and give damages for the use within the Southern District. Looomotive Engine Safety Truck Co. V. Ej-ie Railway Co., 10 Blatch. 292. — Blatch- FORD, 1872. 97. In an action for infringement of patent brought in the Circuit Court for the Southern District of New York, the objection that the cause of action arose in the Northern District of New York is one which may be voluntarily waived, and where defendants did not raise it by their answer, they were taken to have waived it. Black et al. v. Tliorn et al., 10 Blatch. 66. — Blatchpord, 1872. 98. The courts of the United States have no general or common law of jurisdiction. Their power is limited by the terms of the statute which confers it. These limits are held to strict- ly, and the jurisdiction must in all cases be made to appear explicitly. Florence Sewing Mach. Co. V. O. & B. S. M. Co., 110 Mass. 70.-Shbp- LEY, 1872. 99. An assignee can proceed in a state court for an injunction against an infringement of his rights by his assignor. Stone v. Edwards, 85 Texas, 556.— Walker, 1872. 100. " Contracts may be made respecting pat- ent rights that may be enforced in a state court. When the controversy turns upon the effect of the contract and not upon the letters-patent, the case is within the jurisdiction of a state court. " Florence Sewing Mach. Co. v. Oromr & Baker Sewing Mach. Co. et al., 110 Mass. 1. — Chap- man, 1873. 101. A corporation does not waive an objec- tion to the jurisdiction of the court over it by appearing and pleading, by an attorney, to the jurisdiction of the court. Decker v. JST. T. Belt- ing & Packing Co., 6 Fish. P. C. 874. — Bla,tch- FORD, 1873. 102. A defendant died pending suit ; thereof the court said : ' ' No injunction can issue against the defendant, and as there is no proof of infringement by the executor, none can issue against him. No discovery is prayed for against the executor, and there is no presumption of any knowledge by him of his testator's acts. When the title to the principal relief, which is the proper subject of a suit in equity — the in- junction and discovery— fails, the incident right to an account fails also." Draper v. Hudson, 1 Holmes, 208.— Shbplby, 1878. 103. "Although the jurisdiction of the Cir- cuit Court in equity in patent causes rests upon statute provisions, it is to be exercised accord- ing to the course and principles of courts of equity. . . . ' The right to an account of profits is incident to the right to an injunction in copy- right and patent cases.' . . . Where the title to equitable relief fails, the general rule of equity applies that the incidental relief fails also. " — lb. 104. " Exclusive jurisdiction, in all actions at law, and suits in equity arising under any act of Congress granting or conferring to inventors the right to their inventions or discoveries, is conferred upon the Circuit Court, subject to the condition that the final judgment or decree in such controversy may be removed here for re- examination." Mitchell V. Tilghman, 19 Wall. 387. -Sup. Ct. 1878. 105. " When the patentee or his assignee of letters patent for an invention sells to a person a machine ernbodying the patented invention, with a covenant that the vendee and licensee shall be the exclusive licensee, and have the sole right to use the patented invention within a de- scribed territory ; and thereafter sells to another the patented invention in violation of his con- tract, to be used In the described territory, such JURISDICTION. 481 second vendee having notice of the first contract, can the licensee enforce his rights hy bill in equity in the federal courts, without regard to the citizenship of the parties, under the jurisdic- tion conferred upon these courts by the patent act ?" With regard to the case thus stated, the court said . " Is the case supposed a case or con- troversy arising under the patent laws of the United States ? I feel compelled to come to the conclusion that it is not. It is a case arising under a contract in relation to a machine embody- ing in its organization three or more patented inventions. But it is a case arising out of a contract and the relations of the parties under that contract, and not under the patent laws of the United States." Hill et al. v. Whitcomb et al., 1 Holmes, 3:'7. — Shbpley, 1874. 106. A state court has jurisdiction of a case in which it is sought to set aside a patent on the ground of fraud. Leonard v. Barnwm, 34 Wis. 105.— Cole, 1874. 107. A Rhode Island corjioration brought suit for infringement in the Southern District of New York. In the suit defendants sought to have complainant enjoined in similar proceed- ings elsewhere. The court held that it had not jurisdiction for that purpose. Rumford Chem- ical Works V. Hecker et al., 11 Blatch. 553. — Blatchpokd, 1874. 108. " The decision of the Patent Office is never final upon the question of the novelty or priority of an invention." Union Paper Bag MathiTie Co. v. CraTie et al. , 1 Holmes, 429. — Lowell, 1874. 109. In an action for the recovery of money promised to be paid for an interest in a patent, it is open for a state court to go into the ques- tion of the validity of the patent. Rice v. Oarn- hart, 34 Wis. 453.— Lyon, 1874. 110. "If the licensee 'uses the patented in- vention beyond the limits of the license or grant, or in a way not authorized by the license or grant, then there has been a violation of a right secured to the patentee under a law of the United States giving to him the exclusive right to use , the thing patented, although such licensee per- forms, according to their terms, all the cove- nants entered into by him.' " Magic Ruffle Co. V. Elm City Co., 13 Blatch. 151.— Shipman, 1875. 111. "If the licensees have . . . expressly covenanted, in their agi-eement of license, that they will do or will not do a particular act, or will not use the invention for a particular pur- pose, a violation of such covenant is ... a breach of contract, not arising under the laws of the United States, but for which remedy may be sought in the circuit courts of the United States, provided the citizenship of the parties gives jurisdiction to such court." — lb. 112. A bill in equity was brought for breach of contract. Defendant contended that it could not be maintained because there was a complete and adequate remedy at law. The bill asked for an account and discovery, and by reason thereof the equity jurisdiction was maintained. —n. 113. "It is undoubtedly true that the state courts have no cognizance of actions in which the validity of letters-patent is involved. The jurisdiction of the courts of the United States is exclusive over such questions. Where, how^ ever, the controversy does not turn upon the let- ters-patent, but upon the force and effect of some contract under them or in reference to them, in which the question of their validity is not raised, it has long been held that the state courts are appropriate tribunals for the adjudica- tion, and that the federal courts cannot properly assert jurisdiction, unless the residence or citi- zenship of the parties confer to it. " Consoli- , dated Fruit Jar Co. v. Whitney et al., 2 Bann. & Ard. 30.— Nixon, 1875. 114. In a case where the questions at issue are as to the validity and bona fide of certain transfers and assignments of interests in and under them, a state court may take _ jurisdic- tion. — lb. 115. For an example of a state court deter- mining the question of infringement when that issue came in collaterally, see — . Stevens v. Pierpont, 42 Conn. 360.— Carpenter, 1875. 116. State courts have no jurisdiction of the question of infringement of patents when that question comes in direct issue. Smith v. Mc- Clelland, 11 Bush, 523.— Pbtbks,' 1875. 117. " Controversies arising upon conflicting claims to or under patents issued under the laws of the United States are cases arising under the laws of the United States. It is upon this theory that the circuit courts have, from the f ouridation of the Government, entertained jurisdiction of patent cases." Celluloid M'f'g Co. v. Qoodyear Dental Vulcanite Co., 13 Blatch. 375.— Hunt, 1876. 118. " If a contract has been made, investing the defendant with a right to use the complain- ant's patented property, an injunction and an account could only be decreed as the consequence of an adjudication that the defendant had for- feited this right by reason of non-compliance with the terms upon which it was granted. But whether such an adjudication ought to be made would depend altogether upon the rules and 483 JURISDICTION. principles of equity, and in no degree whatever upon any act of Congress concerning patent rights." Tilghman v. Sartell et al., 2 Bann. & Ard. 260.— McKennan, 1876. 119. The decision of the Commissioner of Pat- ents on the question of invention, its utility and importance, is open to inquiry in the courts. Reckendorfer v. Faber, 92 U. S. 347.— Sup. Ct. 1876. , 120. Causes of action that relate to patents, but involving the validity thereof, are triable in state courts. Blakeney v. Ooode et al., 30 Ohio St. 850.— Wright, 1876. 121. A patent owner cannot recover in a state court upon a quantum meruit for an unauthor- ized sale of his patent. De Witt v. Elmira Nobles M'fg Co., 66 New York, 459.— Allen, 1876. 122. "The powers of the Supreme Court of the District of Columbia, in patent cases, ar« the same as those of the circuit courts of the United States." Coclirane et al. v. Deener et al., 94 U. S. 780.- Sup. Ct. 1876. 123. "The circuit courts were first invested with equity jurisdiction in patent cases by the act of February 15th, 1819, which declared that these courts should 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 case, should have author- ity to grant injunctions, according to the course and principles of courts of equity,' etc. " This law was substantially re-enacted in Section 17 of_ the patent law of July 4th, 1836, and Section 55 of that of July 8th, 1870, special power to assess damages in equity cases being also conferred by the latter act. Before the act of 1819 was passed, the Circuit Court had cog- nizance of actions at law brought to recover damages for the infringements of patents, but not of suits in equity in relation thereto unless the parties happened to be citizens of different states." — Ih. 1^4. A state court has jurisdiction of proceed- ings to punish interference with the title and possession of a patent vested in a receiver. Woven Tape Skirt Co., In re, 12 Hun, 111.— Daniels, 1877. 125. A suit in equity was brought for infringe- ment of a patent after the expiration of the pat- ent. The court held that there was no loss to the patentee beyond the mere value of a license ; that there was no element in the case upon which to base an action of profits ; and as no case for an action waS' presented, there was no need of a discovery in aid of an account, consequently an action would not lie. Vaughan v. Central Pa- cific R. R. Co., 4 Sawyer, 280.— Sawtek, 1877. 126. " There may be cases, such as where the infringer makes a profit by the sale or use of the invention, wherein the patentee may have an election of remedies for an infringement of his patent — viz., by an action at law to recover the damages sustained, in which the actual damages may be trebled, in the discretion of the court ; or by a suit in equity for an account and recov- ery of the profits made by the infringer from- the sale or use of the invention. It would seem from these authorities that the jurisdiction of equity in the latter case rests on the ground of a trust. The patentee being entitled to the profits result- ing from the sale or use of his invention, the in- fringer is converted into a trustee for the paten- tee, as regards the profits thus made, and of which he would otherwise be deprived. But in order to maintain a suit in equity for an ac- count of profits there must be actual profits re- sulting to the infringer, susceptible of computa- tion or estimation, of which the patentee could be deprived, and with which the infringer may be charged as a trustee. If, from the character of the invention, there can be nothing in the na- ture of profits of which the patentee can be de- prived, there is no basis for charging the in- fringer with receiving profits for his benefit, and nothing for which he can be called upon to account " — lb. 127. A bill in equity was filed after expiration of patent, and prayed for a discovery and an ac- counting, but not for an injunction. It was held that the bill might be sustained upon the prayer for a discovery and an account. Vaughan v. East Tennessee, Virginia tb Georgia R. R. Co., 1 Flippin, 621.— Brown, 1877. 128. " When a bill is brought for a discovery and for other equitable relief within the appro- priate jurisdiction of a court of equity, and the ultimate object of the plaintiff is to obtain dam- ages, in such case the court, having granted a- discovery, will proceed and give the proper relief in damages, and not compel the plaintiff to un- dergo the delays and expenses of a suit at law." Magic Ruffle Co. v. Elm City Co., 14 Blatch. 109. — Shipman, 1877. 129. " It may be regarded as generally true that a court of equity ought not to sustain a bill which, although it may contain matter which can give the court jurisdiction, is merely for the assessment of damages for a breach of con- tract." — Ih. JURISDICTION. 483 130. " Where a bill is brought for discovery in a case which is not the proper subject of an action or bill for an account, the fact that the plaintiff is entitled to a discovery does not neces- sarily entitle him also to an account." — lb. 131. " There is . a class of cases in which the relief to be ultimately rendered is the pay- ment of damages alone, and where the party seeking such relief needs the aid of a court of equity for discovery, in a case which, is not of trusteeship or agency, but where the ascertain- ment of damages is complicated and intricate, and the action at law cannot be adequately tried without great difficulty, resulting from the na- ture of the accounts or from other circum- stances. In such cases a court of equity assumes jurisdiction of the whole case, and proceeds to a final degree upon the merits."^/ J. 132. "When the patentee has infringed his license, and, while holding the legal title to the patent in trust for his license, has been faithless to his trust, ' courts of equity are always open to the redress of such a wrong. "This wrong is an infringement. Its redress involves a suit, therefore, arising under the patent laws, and of that suit the Circuit Court has jurisdiction.'" Stanley Rule & Level Co. v. Bailey, 14 Blatch. 510.— Shipman, 1878. 138. A suit for infringement of a patent was brought ' in the Northern District of Illinois. Motion for provisional injunction was made. It did not appear that the defendant had ever made or sold any infringing goods in said district ; he was the agent of a St. Louis packing company for the sale of their goods in New York City, and did no business and had no place of business in said district. The court held that " a prelim- inary injunction ought not, therefore, to issue against him in this district, because such a proc- ess cannot run beyond the territorial limits of the district — certainly not in an ordinary case." Wilson Packinq Oo. et al. v. Olapp, 8 Bissell, 154.— Blodgett, 1878. 134. Where a bill of complaint seeks a discov- ery and accounting for profits, it can be main- . tained after the expiration of the original and extended terms of the patent. Sayles v. Dubugue & Sioux City B. R. Co., 5 Dillon, 561.— Dillon and Love, 1878. 135. "A bill in equity when otherwise main- tainable will lie in behalf of the patentee, al- though the patentee has expired, and the case is such that no injunction has issued or can issue. The Infringer is converted into a trustee for the- patentee as to profits made by the former from the use of the patented invention ; and this is sufficient ground of equity jurisdiction of the bill to ascertain the amount of such profit and to compel the infringer to account for the same. ' ' Stevens v. Kansas Pacific R. B. Co., 5 Dillon, 486.— Miller, 1879. 138. Where a dispute between complainant and respondent is really about a license, and the parties are citizens of the same state, a federal court has no jurisdiction. Hartell v. Tilghman, 99 U. S. 547.— Sup. Ct. 1879. 137. " The power to prevent, by injunction, the violation of a right secured by a patent, is conferred, by Section 4921 of the revised stat- utes, irrespective of any right, in the given suit, to recover profits or damages." Colgate v. In- ternational Ocean Telegraph Co., 17 Blatch. 308. —Blatch. 1879. 138. In a suit between two parties, where one seeks to compel the other to transfer the title to a patent, and both parties are citizens of the same state, a federal court has no jurisdiction. Perry. V. Littlefieldetal., 17 Blatchford, 273.— Blatch- PORD, 1879. 139. A claim for relief against setting up a fa,lse title to a patent does not give jurisdiction to a federal court. Prime et al. v. Brandon M'fg Co., 16 Blatch. 453.— Wheeler, 1879. 140. The acts of 1789 and 1875 declare that " no suit shall be brought against any person in any other district than that in which he is an inhabitant, or where he is found." The present suit was brought in the Southern District of Illi- nois. The laws of Illinois provided " that for- eign corporations, and their agents doing busi- ness in this state, shall be subject to all liabilities, restrictions, and duties which are or may be im- posed upon corporations of like character in this state, and that they shall have no other or greater power is expressly stated in the statute. " The allegation in the bill of complaint was that the Saint Louis Beef Canning Company— a cor- poration under the laws of Missouri— owns and possessed a slaughter-house and stock-yard in East St. Louis, 111., where beef to be canned by the company was slaughtered and pressed preparatory for and in the name of such com- pany. Jurisdiction of the court was sustained, the court saying that "it is necessary that the foreign corporation should do business in the state in order to be found there, and in order to warrant a service on the president when within the limits of the state." Wilson Packing Co. V. Hunter, 4 Bann. & Ard. 184.— Drummond, 1879. 141. Doubted, " Whether, under Section 55 of the act of 1870, or Section 4931 of the revised statutes, the United States circuit courts have jurisdiction in patent cases, except by in June- 484 JURISDICTION. tion, where the parties are citizens of the same state." Sayles v. SidiTnoThd, Predericksburg & Potomac B. B. Co., 3 Hughes, 173.— HuflHEs, 1879. 143. "It is a well-settled canon of construc- tion that jurisdictional legislation must be strict- ly construed. ' ' - lb. 143. After a patent has expired so that no in- junction can be granted, and although the bill of complaint is not a bill of discovery, the court has jurisdiction to award an account, and can therefore talse cognizance of the suit as a suit in equity. Gordon v. Anthony et al., 16 Blatch. 334.— Blatchford, 1879. 144. " No law of the United States makes pro- vision for the service of any process outside of the district. ' ' No such service can be made in the interference proceeding provided for by Section 4918 of the revised statutes. JUggett & Myers Tdb. Co. v. Miller et al., 1 McCrary, 31. — McCkaet, 1880. 145. Where the original specification in the application on which the patent issued had been amended by filing substantially a new one, writ- ten by an attorney who had not received a power from the proper party, it was held that such in- formalities are cured by the issue of the patent, and that the action of tlie Commissioner therein cannot be inquired into in an action for infringe- ment. Hoe et al. v. Cottrell et al., 17 Blatch. 546.— Shipman, 1880. 146. Where a United States court has entered a final decree of infringement and for injunction upon agreement of parties, a state court has ju- risdiction—the parties being citizens of the same state —to entertain a suit, at defendants' instance, praying that the agreement may be set aside and complainant enjoined from availing himself thereof, on the ground of a heretofore uudiscov. cred bar to the validity of complainant's patent in the existence of a prior patent for the same invention, for the state court might decide that ignorance of the existence of said prior patent affords no ground upon which to set aside the agreement. [It seems that if the inquiry in the state court should lead to determining the iden- tity of the two patents, that court would have the power to pass on that question.] The United States court thereupon stays contempt proceed- ings until the determination of the issue in the state court. Pentlarge v. Beeston et al., 18 Blatch. 38.— Benedict, 1880. 147. The above decision is without prejudice to said complainant's right to proceed regularly in the United States court by bill of complaint. — lb. 148. Tlie Court of Claims has jurisdiction whenever a patentee seeks to recover compensa- tion under a contract with the Government for the use of his patent. Morse M 'fg Co. v. U. S., 16 Nott & Hop. C. C. 396.— Davis, 1880. 149. Questions of title to a patent are ques- tions " which arise under the patent laws," and give an United States court jurisdiction. Camp- bell V. James et al., 18 Blatch. 92. — Wheelbk, 1880. 150. Section 719 of the revised statutes pro- vides : ' ' An injunction shall not be issued by a district judge, as one of the judges of a circuit court, in any case where a party has had a rea- sonable time to apply to the Circuit Court for the writ ; nor shall an injunction so issued by dis- trict judge continue longer than to the Circuit Court next ensuing, unless so ordered by the Circuit Court." Held, " It must be taken to be the law still, that the district judge not acting through the court, but signing the writ himself in vacation, should not do so when the Circuit Court is sitting or can be applied to, and should limit its operation to the next ensuing term. But the district judge has full power to hold the Circuit Court for all purposes, including this." Goodyear D. V. Co. v. Folsom, 3 Fed. Eep. 509. — Lowell, 1880. 151. A suit in equity for an accounting as to an indefinite amount of damages and profits may be brought and maintained after the patent expires. Atwoodv. Portland Co., 10 Fed. Rep. 383.— Lowell, 1880. 153. The Federal Court for the Southern Dis- trict of Ohio is by law in two divisions, the East- ern and the Western. A resident of the Eastern Division was sued in an action made returnable in the Western Division. The respondent filed a general appearance, and on motion had time for answer extended. Held, that it was then too late for the respondent to object to the juris- diction, and that these proceedings named were a waiver of such right to object. Page et al. v. Chillicotlie, 6 Fed. Rep. 599. -Swing, 1881. 153. A patent having expired, a suit in equity was brought thereon merely to recover profits and damages. It was held that an equity suit could not be maintained. Boot v. L. B. & M. 8. Bailroad Co., 105 U. S. 189.— Sup. Ct. 1882. 154. For a resume of legislation upon equity jurisdiction in patent cases, see — . lb. 155. By the court : " Our conclusion is that a bill in equity for a naked account of profits and damages against an infringer cannot be sus- tained ; that such relief ordinarily is incidental to some other equity the right to enforce which secures to the patentee his standing in court ;" that the most general ground for equitable inter- position is to insure to the patentee the enjoy- JUEISDICTION. 485 ment of his specific right by injunction against a continuance of the infringement ; but that grounds of equitable relief may arise other than by way of injunction, as where the title of the complainant is equitable merely, or equitable in- terposition is necessary on account of the impedi- ments which prevent a resort to remedies purely legal ; and such an equity may arise out of and inhere in the nature of the account itself, spring- ing from special and peculiar circumstances which disable the patentee from a recovery at law altogether, or render his remedy in a legal tribunal difficult, inadequate, and incomplete ; j and as such cases cannot be defined more exact- ly, each must rest upon its own peculiar circum- stances as furnishing a clear and satisfactory ground of exception from the general rule. — lb. 156. By the court : " It is the settled doctrine of this court that this distinction of jurisdiction between law and equity is constitutional to the extent to which the seventh amendment forbids any infringement of the right of trial by jury, as fixed by the common law, and the doctrine applied to patent cases as well as others." — lb. 157. Complainant sought by bill in equity to have defendant's patent applied to the payment of a debt of $53 due from defendant to com- plainant. Both were citizens of the same state, and bill was dismissed for want of jurisdic- tion. Ryan v. Lee, 10 Fed. Bep. 917.— Tkkat, 1882. 158. Where the defendants do not rest their case upon the question whether a royalty con- tract between them and complainant is termi- nated, but in substance deny infringement. United States courts have jurisdiction of the case. Smith v. Standard Laundry Maeh. Co. et al., 30 Blatch. 360.— Wheeler, 1883. 159. A bill in equity for infringement of pat- ent cannot be brought and sustained after the expiration of the patent simply for an account of profits and damages. Campbell v. Ward, 13 Fed. Rep. 150.— Nixon, 1883. 160. Where, after the expiration of a patent, an owner of a patent had a full remedy for in- 'fringement by action at law, it was held that an action in equity would not lie. Hayward et al. V, Andrews et al., 13 Fed.' Rep. 786.— Harlan, 1882. 161. By the court : " Not being entitled to an injunction, some other ground for equitable re- lief must be disclosed in the bill besides a naked account for profits and damages in order to give the court jurisdiction in equity." Spring et al. V. Domestic Sewing Mach. Co., 13 Fed. Rep. 446. —Nixon, 1883. 163. By the court : "It is never too late at any time during the pendency of the proceed- ings for the court to examine into its right and power to make a decree or enter a judgment in a case. " Nor need the objection be raised in the pleadings. — lb. 163. By the court : " An injunction is a pre- ventive remedy, having reference to the future rather than the past. The complainant not be- ing entitled to one in the case, and the provisions of the patent law giving to one to whom has been assigned an interest in the damages for past infringement, as incidental to the transfer of the legal title, the remedy of an action on the case, I am of opinion that this court in equity has no jurisdiction. ' ' — lb. 164. Complainant had assigned his patent to defendants upon their figreement to pay him certain royalties. He claimed that proper roy- alties had not been paid, asked relief in that re- gard, and also sought to have the question de- termined whether certain articles were within his patent. It was held that this furnished a case for a state court and not for a federal court. Teasy. Albright et al., 23 O. G. 3069.— Nixon, 1882. 165. Where an equity suit has been brought on a patent, and the patent expires while the ac- tion is pending, the action will not be dismissed because of such expiration. Oottfried v. Moer- lien, 14 Fed. Rep. 170.— Baxter, 1882. 166. By the court: "As the defendants ad- mit the validity and use of the complainants' patent, and a subsisting contract is shown gov- erning the rights of the parties in the use of the invention, the case is not one arising under the patent laws of the United States ; and the requisite diversity of citizenship between the parties not existing, this court has no jurisdic- tion." Niclwls et al. v. lice et al., 14 Fed. Rep. 353.— Wallace, 1882. 167. Befendant held a revocable license from complainant. Complainant revoked it, and brought suit for infringement. Defendant not only answered that the license was not lawfully terminated, but denied making and selling the patented machines. The issue raised by this plea was held to give an United States court jurisdiction irrespective of citizenship. Smith V. Standard Laundry Mach. Co., 19 Fed. Rep. 836.— Wheeler, 1882. 168. A bill in equity for infringement will not lie when the bill is filed only five days before the expiration of the patent, even though an in- junction be asked for. Burdell v. Comstock, 15 Fed. Rep. 395.— Baxter, 1883. 169. By the court : " Objections to the juris- diction are usually taken in the first instance. 486 JURISDICTION. but a plain defect of jurisdiction may be insisted upon at the hearing." — Ih. 170. By the court : " The only complaint made in the bill is that the appellants were fraudulently excluding the appellee from the inspection of their books of account, and refus- ing to pay him the sums due for royalties under liis contract ; and the prayer of the bill was for , a disclosure and account of what was due the appellee under his contract, and a decree for the amount found to be due him. On the face of the bill, therefore, the case is not one arising under the patent laws of the United States. . . . The suit, notwithstanding the collateral inquiry, remains a suit on the contract to recover royal- ties, and not a suit upon the letters-patent. It arises solely upon the contract, and not upon the patent laws of the United States." Albright et al. V. Teas, 106 U. S. 613.-Stjp. Ct. 1*^83. 171. For a discussion of the question of ser- vice'of process upon a non-resident corporation, see — . Oray et al. v. Taper Sleeve Pulley Wm-ks, 24 O. G. 602.— Acheson, 1883. 172. Defendant entered into a contract with complainant in 1865 to manufacture a certaiij number of patented mowing machines each year during the life of a patent expiring in 1883. In 1881 a bill in equity was brought asking for specific performance and for damages. Held, that the bill in equity would not lie because specific performance at that date was impossible, and because the remaining thing claimed— the damages — was recoverable in an action at law. Werden et al. v. Graham, 24 O. G. 101.— Stjp. Ct. 1883. 173. Where the suit was simply on a license, on a certain contract between the parties, it was held that there was no question arising under the patent laws, and no jurisdiction in a United States court. Kelly y. Porter et al.,8 Sawyer, 482.— Sawyeh, 1883. 174. By the court : " Sitting here in equity I cannot, after the expiration of the patent, un- dertake to decide upon its validity or enjoin my- self from trying the case at law, pending in ,New Hampshire, unless some purely equitable defence is made out which would not be equally available in that action." Concord v. Norton, 16 Fed, Rep. 477.— Lowell, 1883. 175. "Where an equity suit was brought in a federal court for infringement of patent and also for recovery of royalties, and the patents were adjudged invalid, it was held that the suit could be maintained as to the royalties when the citizenship of the parties give the court juris- diction. McKay v. Jackman, 17 Fed. Rep. 641. — Wheelbb, 1888. 176. Where the patentee seeks for the use of his patent a stipulated royalty or license, he can proceed in equity for an infringement, when he seeks an injunction. McMillin et al. v, 8t. Ijouis & Mu8. Valley Transp. Go., 5 McCrary, 561.— Treat, 1883. 177. A suit in equity cannot ordinarily be maintained for infringement of a patent if brought after the expiration of the patent. Gramme E. C. v. Arnoux & Hochausen E. Go. et al., 31 Blatch: 450.-Blatch. 1883. 178. Although a patent expires pending a liti- gation upon it, an equity suit previously com- menced will be retained to complete the account- ing. Adams et al. v. Howard et al. , 32 Blatch. 47.— Wallace, 1884. 179. Complainants brought their bill of com- plaint June 12th, 1880, setting up their original patent only. It had been reissued and would expire August 25th, 1880. September 22d, 1880, the bill was amended so as to set up the reisstie. It was held that the suit might con- tinue. Beay et al. v. Eaynor et al. , 22 Blatch. 13.— Whbelbk, 1884. 180. The complainant's bill of complaint was filed one day before the patent expired, seeking the ordinary remedies. Defendant demurred for want of equity, and his demurrer was sus- tained. Dams V. SmitJi, 19 Fed. Rep. 823.— Lowell, 1884. 181. Defendants held a revocable license from complainant. Complainant revoked it and brought suit for infringement. Defendants not only answered that the license was not lawfully terminated, but denied making and selling the patented machines. The issue raised by this plea was held to give an United States court jurisdiction irrespective of citizenship. Smith V. Standard Laundry Mach. Go. et al., 20 Blatch. 360.— Wheeler, 1882. 182. Where a suit is brought against the Com- missioner of Patents in one of the circuit courts of the United States, and the Commissioner ac- cepts service, the court acquires jurisdiction so far as the presence of the Commissioner is con- cerned. Vt. Farm Mach. Co. et al. v. Marble, 22 Blatch. 128.— Wheeler, 1884. 183. Where a trust is created and its objects are to be carried out within a certain state, the validity of a transfer of a patent involved in the creation of such trust is to be tested by the law of the state, though the matter may be in ques- tion in a suit in a federal court. Ladd, Trustee, v. Mills et al., 22 Blatch. 242.— Wallace, 1884. 184. Where three patents are set up in a bill of complaint, and it is alleged that " these sev- eral letters-patent are applicable to the same JUEISDICTION. 487 process, and are so used by the defendants," it seems that in awarding damages a consideration of all three may be necessary, equity jurisdic- tion may be maintained, although some of the patents are near their expiration. N. T. Orape Sugar Co. v. Peoria Orape Sugar Co., 21 Fed. Rep. 878.— Blodgett, 1884. 185. Where a bill of complaint for an infringe- ment of a patent is filed more than three months before the expiration of the patent, it cannot be said that it is impossible to give complainant an injunction, or even to reach a final decree on the merits before the expiration of the patent, and, therefore, equitable jurisdiction may bo maintained. —lb. 186. An infringer may be enjoined in a dis- trict where he lives from committing infringe- ment elsewhere. Hatch et al. v. Hall, 33 Fed. Kep. 438.— Wheeler, 1884. 187. A licensor brought an equity suit against the licensees praying disclosure of license fees, " and for such other and further relief as the case may require." Thereupon the court said : " So far as the bill is one for relief, it is clear that this court has no jurisdiction to grant it. The action is brought to enforce a contract, and there exists a plain, adequate, and complete remedy at law. So far as the bill seeks a dis- covery it is open to the objection that there is no allegation that a suit at law has been brought. In order to support a bill of discovery it must appear that the discovery is asked for the pur- poses of some suit brought, or intended to be brought, otherwise it will not be entertained, as courts of equity grant discovery to aid mere legal proceedings. . . The defendant can de- mur to the whole bill, if it does not aver that a suit at law is pending in which a discovery may be material." Perkins v. Hendryx et al., 33 Fed. Rep. 418.— Colt, 1885. 188. Although the sum in dispute is small, yet, if the evidence tends to show a technical right to an injunction and a claim for profits, an equity suit will lie, and complainant will not be remitted to his action at law. Qreene v. Bar- ney, 19 Fed. Rep. 430.— Lowell, 1884. 189. Where a corporation has infringed a pat- ent and then made an assignment in insolvency to an assignee, a bill for infringement by the corporation can be maintained against the as- signee, although the patent owner might, if he choose, present his claim to the assignee and prosecute it under the laws of the state. Oor- don et al. v. St. Paul Harvester Works et al. , 33 Fed. Rep. 147.— Nelson, 1885. 190. " A court of equity should not refuse to entertain a bill of discovery, although by the enlargement of the jurisdiction and remedies ex- ercised by courts of law, similar relief could be obtained by the complainant in his action at law." Colgate v. Campagnie Frangaise Du Tele- graplie & Co., 33 Fed. Rep. 83.— Wallace, 1885. 191. If the right of the patentee was acknowl- edged, and without his consent an officer of the Government, acting under legislative authority, made use of the invention in the discharge of his official duties, it would seem to be a clear case of the exercise of the right of eminent domain, upon which the law would imply a promise of compensatioui an action on which would lie within the jurisdiction of the Court of Claims. ; . . . And it may be that, even if the e.xclu'sive right of the patentee were contested, such an ac- tion might be brought in that court involving all questions relating to the validity of the patent." Hollister v. Benedict & Burnham M'f'g Co., 113 U. S. 59.— Sup. Ct. 1884. 193. Though a state court may enjoin a party from disposing of patents which stand in his name, when the title thereto is in doubt it may not enjoin him from the use of the patented mechanism, for the courts of the United States are vested with exclusive juiisdiction of the pre- vention of the infringement of patentable inven- tions. Continental Store Co. v. N. T. Store Ser- vice Co. et al , 31 O. G. 1561.— Shipman, 1885. 193. " Courts of equity can exercise jurisdic- tion in patent causes only where the circum- stances call for the peculiar forms or character of relief which these courts administer. Ordi- narily the relief required is that afforded by the writ of injunction. Where, therefore, the cir- cumstances do not call for the service of this writ, the jurisdiction of equity does not ordina- rily apply. . . . To sustain such a suit, the entire right in the patent must be presented." Hewitt et al. V. Pa. Steel Co., 31 O. G. 1687.— Butler, 1885. 194. Where, before the expiration of a patent, a suit in equity is commenced for its infringe- ment, the complainants being less in number than all the owners, and the proper owners are not brought in by amendment until after the patent expires, the further jnrisdiction in equity must be maintained. — lb. 195. A corporation of one state doing busi- ness in another state is suable in the courts of the United States established in the latter state if the laws of that latter state so provide, and in the manner provided by those laws, but not otherwise. Boston Electric Go. v. Electric Cos Lighting Co., 33 Fed. Rep. 838. -Colt, 1885. 196. Where the defendants had manufactured 488 JUEISDICTION. but one infringing machine, and tliat more than three years before the bill of complaint was filed, and there was no claim that they threat- ened to repeat the wrongful act by making an- other, it was held that an adequate remedy at law existed, and that an equity suit could not bp maintained. Smith et al. v. Sands et al. , 34 Fed. Rep. 470.— WiTHEY, 1885. 197. Where the defendants had used a single machine, and the complainants were in the habit of granting licenses, it was held that an ade- quate remedy at law existed, and that an equity suit could not be maintained. — lb. 198. For a state of facts in which laches were held to bar the maintenance of a suit in equity for infringement of a patent, see — . N. T. Orape Sugar Co. v. Buffalo Qrape Sugar Co. et al., 33 Blatch. 167.— Shipman, 1885. 199. While two persons were both directors, and one was vice-president and the other treas- urer of a company, the alleged infringement thereby begun.k Subsequently these persons sold their stock iu the company, bought the patents in suit, and, through their a,ssignee, brought suit against said company for infringement. There- of the court said : " An enforcement of such claim does not seem to me to be the province of a court of equity. ' ' — lb. , 300. The losing party to an interference in the Patent Office, being a prior patentee, may bring on the interference anew in a United States cir- cuit court under Section 4918 of the revised statutes. Hubel v. Tucker et al., 33 Blatch. 297. — Wallack, 1885. 301. Where a bill of complaint for alleged in- fringement of patent was filed twenty-six days before the patent expired, thereby giving time enough for notice of a motion for provisional injunction and to obtain it, and the bill set forth special circumstances for equitable relief iu that the plaintiff had retained the exclusive right to make and sell, and is exercising it, and is able to supply the market, and the defendants are making the machines containing the invention, and threaten to make them in large quantities, and intend to put upon the market the coming season Infringing machines made before the pat- ent expires, and the bill prays for an injunction restraining the sale after as well as before the patent expires of such machines, equity will take jurisdiction. Toledo Mower & Beaper Co. v. Johnston Harvester Co. et al., 33 Blatch. 332. — BLATCHPonD, 1885. 302. Where the pa.tent in suit would expire May 5th, and the bill of complaint is sworn to April 39th, filed May 1st, and the subpajna to .appear, and answer was served May 3d, and the sole object of the bill plainly appears to be to obtain profits and damages, equity jurisdiction will not be sustained. Mershon v. /. F. Pease Furnace Co., 23 Blatch. 339. — Blatchfohd, 1885. 303. " If there is" a plain, adequate, and com- plete " remedy at law when the defendant is brought into the court of equity ; if there is not, in good faith, at that time a case in which the court of equity could., by the exercise of its ju- risdiction in the ordinary course of procedure, give to the plaintiff the most moderate measure of equitable relief which he prays or would be entitled to on his allegations ; if the coming into the court of equity appears to be a pretence to avoid the court of law, the court of equity should not entertain the case. ' ' —lb. 204. The language of Section 4921 of the re- vised statutes seems to make the power to award profits dependent upon the power to grant an injunction, but the general course and principle of courts of equity make the right to an account dependent on the right to an injunction. In thus mentioning power and right the court refers to entertaining the suit at all, and not to the power to give proper relief iu an equity suit properly brought where the patent expires dur- ing the pendency of the suit. — lb. 305. Where the only question to be established in a suit is the number of machines made by the defendants under a license which he has not accounted an 1 paid for, this can be estab- lished as readily and completely in a suit at law as in equity, and equity will not take jurisdic- tion. Grandall et al. v. Piano ITfg Co., 32 0. G. 1123.— Blodgbtt, 1885. 306. ' ' All patentees have an adequate remedy at law in suits against infringers, except in cases where there is a right to an injunction as a part of the relief sought ; but ... in all cases where the only question is as to the amount of profits and damages, and the plaintiff is not entitled to an injunction, the remedy is at law." — lb. 307. In a bill of complaint for alleged infringe- ment of a patent filed after the expiration of the patent, there were set out therein special allega- tions i-elating to the discovery sought ; such as that the infringing machines were made by the defendants in different rooms of the factory and put together either in the factory or at the place of business of the purchasers in distant parts of the country ; that some had been shipped to foreign countries ; that sometimes the outer door of de- fendants' factory had been locked, etc., etc., whereby complainant was rendered ignorant of and not able to ascertain the number and size of the machines sold. It was held that these were JUEISDICTION. 489 not such special circumstances as would entitle the court to entertain jurisdiction in equity. Ijord V. Whitehead & JStherton Maoli. Oo. et al., 24 Fed. Rep. 801.— Colt, 1885. 208. By the court: " Since the law authorizing the examination of parties as witnesses, we un- derstand the more general and better rule to be that equitable jurisdiction will not attach for dis- covery simply, except in aid of a suit at law ; but the party must involve some otlier distinct equitable ground. And where the broader rule may be said to prevail based upon the proposi- tion tliat the court, having acquired jurisdiction for the purpose of discovery, will proceed and determine the whole matter in controversy, the plaintiff must allege that the facts concerning which he seelis a disclosure are material to his cause of action ; that he has no means of prov- ing lliese facts by the testimony of witnesses, or by any other liind of evidence used in courts of law ; that the only mode of establishing them is by compelling the defendant to make a dis- closure ; and that therefore a discovery by suit in equity is indispensable ; and, further, if the defendant by his answer fully denies all the al- legations with respect to which a, discovery is demanded, the suit must fail."~Ji. 209. An equity suit was brouglit Slay 5th, 1885, upon letters-patent which expired upon June 16th, 1885. Process was served on the de- fendants May 7th, and no steps taken to secure a provisional injunction. After the patent ex- pired it was contended that the court could not retain jurisdiction. The court decided that it had jurisdiction. Biek et al. v. Strutliers et al., 25 Fed. Rep. 103.— Achbson, 1885. 210. " If a case is cognizable in equity at the time the bill is filed, the mere fact that the patent is expired does not oust the jurisdiction of the court."- JJ. 211. " A bill in equity for a naked account of profits and damages against an infringer of a patent cannot be sustained." Adams et al. v. ' Bridgewater Iron Co. et al., 34 O. G. 1043. — Colt, 1886. 312. " Mere intricacy of the accoimt docs not furnish a ground for equitable interference." — lb. 213. Suit in equity was begun July 10th, 1880. The patent was to expire August 2d, 1880. The bill prayed for a perpetual injunction. It was held that equity jurisdiction was maintainable. —lb. 214. "It is undoubtedly the rule that where there appears to be a subsisting license between the complainant and the respondent, the juris- diction of the court under the patent law will not be extended to cover a suit to enforce the terms of the license, or to forfeit the license on the ground that the terms thereof have been vio- lated. . . . Where a suit is brought for infringe- ment, and the existence of a license is alleged by the respondent and denied by the complainant, it is competent for the court to determine whether, at the time of the filing of the bill, there was a subsisting license between the parties." Ham- macher et al. v. Wilson, 26 Fed. Rep. 339.— Carpentee, 1886. 215. Over a year after a patent expired, a bill in equity was sought to be maintained on the ground that it was desired to enjoin against the use of infringing articles made during the existence of the patent. It was held that the equity suit could not be maintained. Consoli- dated Safety Valve Co. v. Ashton Valve Co. et al., 26 Fed. Rep. 319.— Colt, 1886. 216. A suit in equity was brought to subject a patent right to the payment of the complain- ant's judgment debt. The parties were citizens of different states. It was held that the federal court had jurisdiction. Qorrell v. Dickson, 26 Fed. Rep. 454.— Acheson, 1886. 317. An agreement by which the defendant was to report monthly the number of machines made under licenses, with covenant not to make machines except of a certain description and not to dispute the validity of the patents mentioned in the licenses, accompanied by the allegation that defendant had violated his agreements in all these particulars, makes a clear case for the interpretation of a court of equity. Pope irfg Co. V. Owsley, 27 Fed. Rep. 100.— Blodgett, 1886. 218. For the mere recovery of a I'oyalty, action at law is ample. Bragg v. City of Stockton, 21 Fed. Hep. 509.— Sawyer, 1886. 219. Where a patented thing is a machine which defendant has used but not made, and complainant has an established royalty, com- plainant, on bringing suit in equity, is entitled to an injunction without damages, or, if he pre- fers, an account of profits and an injunction against further use.— lb. 220. Where, in a suit for alleged infringement, the parties are citizens of the same state, and there happens to be a license between them, the bill of complaint must be dismissed. Jencks v. Langdon Mills et al., 27 Fed. Rep. 623.— Colt, 1886. 221. "As a general rule, the right to an ac- count to profits in patent cases is incident to the right to an injunction ; and ' where the title to the principal relief, which is the proper subject of a suit in equity, and injunction and discov- 490 JUEISDICTION. ery, fails, the incident, right to an account fails also. ' . . . But it does not follow that, where the jurisdiction of the court in an injunction bill has attached, it is entirely ousted by the subse- quent happening of an event which precludes the exercise of the power to grant an injunction. On the contrary, patent bills are frequently re- tained by the circuit courts after the expiration of the term of the patents, when an injunction against infringement could not be granted, and equity, touching accountability for profits and damages and the patentee's rights, has been ad- ministered according to such methods as might be appropriate to the circumstances. Much stronger is the reason for preserving the juris- diction of the court where its alleged loss re- sults from a mere change of the relation of the respondent to the suit, as by his death." Kirk V. BuBois, 28 Fed. Rep. 460.— McKennan, 223. More than a year after a bill of complaint was filed the patent in suit expired. It was held that an equity court continued to have jurisdic- tion. Broolcs V. Miller, 28 Fed. Rep. 615.— Ste- vens, 1886. 223. " [1] The patentee, in resorting to his remedy, whether in a court of law or equity, is bound by the same principles affecting the ju- risdiction of the two tribunals as prevail iu other branches of law. If the remedy at law is ample, he is bound to pursue it ; otherwise he may re- .sort to a court of equity. [2] In a case of in- fringement then continuing by the unauthorized use of a machine which embodies his invention, the patentee is not restricted to the remedy at law, but may apply for an injunction, and, upon his bill, obtain an award for damages for past infringement. ... [3] If the case Is not one appropriate for an injunction, but is for dam- ages only— as, for example, when the bill is filed after the expiration of the patent — the remedy is at law only. [4] Where . . .■ there is, at the time of filing the bill, a right to an injunction, and one is prayed for, but no j)reliminary injunction is sued out, the fact that the right to a permanent injunction is lost pending the suit, as by the expiration of the patent, will not oust the court of jurisdic- tion. Its control of the case, having once at- tached, will continue, notwithstanding superven- ing events. Of course if the bill is filed so nearly before the expiration of the patent that, according to the usual practice of the court, no injunction could be obtained in time to be of any service, it is obvious that the bill should not be sustained. The substantial hold which the court has being for the purpose of awarding an injunction, it will not entertain the case at all if the expectation of affording that remedy is mani- festly illusory. But if, at the commencement of the suit, the facts exist, and there is time to afford the remedy while it may yet be efficient, it would be contrary to the general principles of the court to dismiss the bill, because, on account of the delays of litigation, it had lost the power to grant that relief, provided other subjects of legal inquiry remained in the case." — lb. 224. " A suit for royalty on a license is a suit at common law, or if in equity, it is a suit on general equity, not dependent at all upon the patent law. and not within the jurisdiction of the Circuit Court of the "CTnited States unless the parties are citizens of different states." Con- solidated Middlings Purifier Co. v. Wolf et ciL, 37 O. G. 567.— Bbadlbt, 1886. 225. " A suit merely for an account of profits and damages on a license cannot be maintained in equity. There must be something more. There must be some equitable ground of relief in addition to the demand for an account of that kind."— i^. 226. A provisional injunction against infringe- ment may be granted before the patent issues and while the application is pending. Butler V. Ball, 28 Fed. Rep. 754.— Welkek, 1886. 227. " Except where the law of the state where it carries on business and is sued imposes, expressly or by implication, a liability to suit thei'e as a condition of its doing business in the state, a foreign corporation cannot be found, for the purpose of a suit, in personam, outside of the jurisdiction or sovereignty creating it." United States v. Am. Bell Telephone Co. et al., 29 Fed. Rep. 17.— Jackson, 1886. 228. "In the absence of a voluntary appear- ance, three conditions must concur or coexist in order to give the federal courts jurisdiction in personam over a corporation created without ' the territorial limits of the state in which the court is held — viz. . [1] It must appear a.s a mat- ter of fact that the corporation is carrying on its business in such foreign state or district ; [2] that such business is transacted or managed by some olflcer appointed by and representing the corporation in such state ; and [3] the existence of some l0cal law making such corporation, or foreign corporations generally, amenable to suit there as a condition, express or implied, of doing business in the state. When the local law, ex- pressly or by comity, permits foreign corpora- tions to do business in the state ; when it also provides for suit against them in a reasonable and proper manner, and within the just limits of the state's power and authority ; and when JUEISDIOTIOlSr. 491 a foreign corporation thereafter enters the state, and transacts its corporate business by means of resident agents coming within the terms of the local statute, it may be found, and is liable to suit there in either the state or federal courts, by service of process on such agent." — lb. 239. " The judiciary acts [rev. st., Sec. 739] and act of March 3d, 1875, providing that no civil suit or action shall be brought against any person outside of the district in -which he resides or may be found at the time of the service of the process do not affect the general jurisdic- tion of " a circuit " court, but merely confer a personal privilege or exemption upon the de- fendant which can be waived by a foreign cor- poration, not only by a voluntary appearance to the suit, but by doing business in a state im- posing the condition or liability to a suit there' by service of process on its agent. It cannot bo held sufficient, to give" a circuit " court juris- diction in personam over a foreign corporation, that it has property rights, however extensive, within the district, or that it has pecuniary in- terests, however valuable, in business managed and conducted by others. It must itself be car- rying on business in its own right, and on its own responsibility, and for its own account, and through or by means of its own agents, officers, or representatives, in order to bring it within the operation of the laws of a state other than that in which it is incorporated, making it amenable to suit there as a condition of its doing business in such state." — lb. 230. The American Bell Telephone Company had its home and location in Boston, Mass. It was connected business-wise with certain local corporations in Ohio. It was held that " fur- nishing the means necessary to enable the licensee companies to transact the business of telephony in Ohio, either upon a fixed rental and royalty on the telephone instruments used, or a percent- age -of the gross receipts of the business, does not constitute the carrying on of that business by the American Bell Telephone Company, or make the licensee companies its ' managing agents, ' so as to render it amenable to suit here. ' ' — /*. 231. " In exercising" the " common-law right of licensing others to use its patent," a "cor- poration owner is no more nationalized than a private owner would be under the same circum- stances. The fact that a patent-holding corpora- tion licenses others to use its patent in a partic- ular state has no more effect and operation in domesticating it within such state than the same act on the part of a private owner would render him a citizen and resident of every state in which ! his patent might be used. The franchise right of the patent-holding corporation in no way serves to establish the fact that such corporation is carrying on its business, and is to be found wherever its patent is used." — lb. 233. " Neither the patent law, nor the privi- leges secured to patentees thereunder, in any way enlarge, modify, or chan'ge the judiciary acts in respect to either the territorial jurisdic- tion of the federal courts, or the proper service of process upon defendants. " — lb. 233. The home and location of .the American Bell Telephone Company was in Boston, Mass. It was connected business- wise with certain local telephone companies in Ohio. It was sought to get service upon the parent company by service upon the local Ohio corporations. The court held that " the various matters relied on to show that the American Bell Telephone Company is to be found in Ohio, and subject to the jurisdic- tion of this court — such as its ownership of the telephone instruments used by the licensee cor- porations ; the ownership of stock in one or more of the local companies ; the rights and powers reserved to it of resuming possession of its tele- phone instruments, and taking control of the telephone business, in the event of default on the part of tlie licensee corporations in complying with the provisions of the license contracts ; the sharing in the gross receipts of certain portions of the business done ; the reservation of I'ents and royalties ; the right to make changes ; and the restrictions and limitations imposed upon the licensee companies — neither singly nor in the aggregate establish the two essential facts neces- sary to bring the American Bell Telephone Company within the power and jurisdiction of this court — viz., that said corporation is now, or was at the commencement of this suit, carrying on its business in the state of Ohio, and that it had a ' managing agent ' or agents representing it here. The truth of the plea being assumed, the only relation existing between the American Bell Telephone' Company and the local corpora- tions is really and technically that of lessor and lessee, licensor and licensee ; the Bell Telephone Company being merely the lessor of the tele- phone instruments, and the licensor of the right to use the patent embodied therein, on certain terms as to rents and royalties and otherwise, agreed upon between the parties, the contract being entered into not in Ohio, but at Boston, Mass. "— JJ. 234. A bill in equity for infringement of a pat- ent was filed fifteen days before the expiration of the patent. As under the rules of the court only four days of notice of motion for injunc- 492 JUEISDICTIOlSr. tion were necessary, it was held that the court had jurisdiction. Glavk et al. v. Wooster, 119 U. S. 332.— Sdp.Ct. 1886. 235. Wliere, in an equity cause, the bill prays an injunction, and there is time enough before the expiration of the patent to obtain one, yet it is never asked for, equitable jurisdiction has at- tached and may be maintained after the expira- tion of the patent. — lb. 336. " If the cause was one for equitable relief when the suit was instituted, the mere fact that the ground for such relief expired by the ex- piration of the patent would not take away the jurisdiction and preclude the court from pro- ceeding to grant the incidental relief which be- longs to cases of that sort." — lb. 337. " Where a party alleges equitable ground for relief and the allegations are not sustained, as where a bill is founded on an allegation of fraud, which is not maintained by the proofs, the bill would be dismissed in toto, both as to the relief sought against the alleged fraud and that which is sought as incidental thereto. ' ' — lb. 238. Eespondents had taken a royalty license from complainant, and had failed to pay the agreed royalty. Complainant brought bill in equity asking for a discovery and account, also that defendants might be decreed to pay the li- cense fee then due, and that they might be en. joined from using the patented machines until such payments were made. Respondents con- tended that an equity suit could not lie, but the court held otherwise. McKay v. Smith et al., 39 Fed. Rep. 395.— Colt, 1880. 339. Federal courts do BOt have jurisdiction over controversies arising out of license con tracts. Willis et al. v. McColUn, 38 O. G. 1017. — BuTLjsR, 1886. 340. Where the question at issue is whether an assignment covered a certain division of the application, the question is one of patent law of which a federal court has jurisdiction. Puetz V. Bramford, 33 Fed. Rep. 318.— Miller, 1887. 341. A bill of complaint was demurred to on the ground that equity had no jurisdiction, for the reason that the action was begun twenty-one ,days prior to the expiration of the patent, and the complainant had ample remedy at law. By rule of the court, notices of the motion were to be served at least four days before the hearing, and as this might have resulted in seventeen days of injunction, the equity jurisdiction was main- tained. Kittle V. Da Oraafet al., 30 Fed. Rep. 689.— CoxB, 1887. 342. An equity suit had proceeded to the point where the case was sent to a master for an ac- counting in damages. Motion was made to open the decree and to strike out so much thereof as directed the taking of an account of profits and' damages, for the reason that the patent had ex- pired more than two years before the bill was filed. The motion was granted, the court say- ing : " If jurisdiction never attached, neither waiver, delay, nor consent can now confer it. ' ' Creamer v. Bowers et al., 30 Fed. Rep. 185.-- Walks, 1887. 343. Where a patent has nearly sixteen years to run, it is not necessary to shpw a recovery at law to warrant an injunction and an accounting. McOoy et al. v. Nelson, 39 O. Q-. 831. -Blatch- FORD, 1887. 344. By the court : "As the patent was in force ^t the time ^;he bill was filed, and the com- plainants were entitled to preliminary injunction at that time, the jurisdiction of the court is not defeated by the expiration of the patent by lapse of time before final decree." Beedle v. Bennett et al., 89 O. G. 1326.— Sup. Ct. 1887. 345. Where a bill of complaint alleges the in- fringement of a patent, and also alleges that the defendants seek to justify their infringement by reason of purchasing the patented articles from a party claiming the right to make the same, which right the complainant denies, a federal court sitting in equity has jurisdiction of the action. Seiber Cylinder Oil Cup Co. v. Manning et al., 33 Fed. Rep. 625.— Wallace, 1887. 246. " The laws of New York [Sec. 1104, c. 410, Laws, 1882] respecting the presentation of claims against the city of New York to the comptroller for adjustment before bringing suit only apply to such claims as can be prosecuted in the state courts by the actions or proceedings mentioned in Section 1103 ; and (2) if this enact- ment were intended to apply to actions at law brought in the federal courts, it would not apply to suits in equity. The equity jurisdiction of the courts of the United States is subject to neither limitation nor restriction by the state authorities, and is uniform thi'oughout the different states of the Union." Oamewell Fire Alarm Tel. Co. v. New York, 31 Fed. Rep. 312.— Wallace, 1887. 347. " AYliere the statute restricts suits to the district in which the acts are committqd, a con - sistent and reasonable interpretation of the stat- ute requires it to be held that a corporation, for the purposes of such suits, has a ' managing agent,' and is sufficiently ' found' within the dis- trict in the person of an individual who has the direction, management, and control of its busi- ness therein, out of which the acts complained of have arisen, and who so far represents the corporation as to make his acts incurring penal-' ties in that business the acts of the corporation."- LACHES. 493 Hat Sweat M'f'g Co. v. Davis Smoing Mach. Co., 31 Fed. Rep. 394.— Bkown, 1887. LACHES. Cases. 1. Defendants contended against a provisional injunction, on the ground of laches on the part of complainant in not bringing suit. Complain- ant, meanwhile, had been busy with another suit, and was held not guilty of laches. Van Hook V. Pendleton et al., 1 Blatch. 187. — Bbtts, 1846. 3. Defendants objected that the complainant had been guilty of laches in not speeding the cause as a plea in bar, and an answer supporting the plea, had been filed nearly two 3'ears before. It was not shown that any proofs had been taken by either party, or that defendants had availed themselves of their privilege of speeding the cause, and the objection was overruled. Park- hurst V. Kinsman et al. , 3 Blatch. 73. — Betts, 1848. 3. " Where the jury are satisfied that the plaintiffs have not abandoned their invention and privileges granted by letters-patent, their neglect to prosecute parties infringing such patent will not bar their right to recover such damages as they have actually sustained by the defendant's infringement." Bansom et al. v. New York, 1 Fish. P. C. 353.— Hall, 1856. 4. " When the patentee has stood by for a series of years and permitted, or not objected in the way in which the law authorizes him to ob- ject, to the use of the article claimed under the letters-patent, . . such conduct ought to be visited, to some extent, upon the patentee." Ooodyear et al. v. Honsinger, 3 Bissell, 1. — Dedmmond, 1867. 5. " Courts of equity ought to demand of pat- entees reasonable diligence in asserting their rights. Of course, the rule is flexible, subject to be changed by the peculiar circumstances of each case. A court of equity should always act fairly and justly, so as to protect the rights of the patentees, although they may not, owing to various circumstances, prosecute their rights so soon or so early as, under other circumstances, they ought to prosecute them." — Ih. 6. Defendants were advised of a decree as early as May, 1868, but took no steps to move to open it until April, 1869. It was held that they had been guilty of such laches as not to be en- titled to the favor asked, as no excuse was shown for the delay. Doubleday\. Sherman et al., 6 Blatch. 513.— Blatchfoed, 1869. 7. Complainant had given to another party a license to make and sell the patented thing to others, who should procure a license to use it. Defendants set up this fact as acquiescing in in- fringement. The court held otherwise. Jordan V. Dobson et al., 3 Abb. U. S. 398.— Stbong, 1870. 8. If defendants appropriate complainant's in- vention " without consulling him, and he was passive when he knew it, because he was power- less to prevent them, he is not estopped from as- serting his right when he is in a condition to en- force it." McMilUn et al. v. Barclay et al., 3 Pittsb. 377.-MCKENNAS-, 1871. 9. " Nor is this supposed estoppel invigorated by the fact that invasion of the patentee's rights has been widespread, and that all who may be found in that category may be held liable accord- ingly. Whoever reaps where he did not sow wrongfully appropriates what belongs to an- other, and equity will not stay the hand of the rightful owner of the harvest against him. " — lb. 10. "A delay of three months in filing the bill, the defendant not having been induced to change his position or, so far as appears, having had any communication with the plaintiffs in the in- terval, is no ground for refusing the injunction'' (provisional). Union Paper Bag Mach. Co. et al. V. Binney, 5 Fish. P. C. 166. — Lowell, 1871. 11. Eighteen months' knowledge of defend- ants' infringement without proceeding against him creates laches which prevent provisional in- junction. Hockholjer et al. v. Eager et al., 2 Sawyer, 361.— Hillyer, 1873. 13. Delay in bringing suit for a term of years against a known infringer will prevent the issue of a provisional injunction. Whitney et al. v. liolUto'ne Mach. Works et al., 2 Bann. & Ard. 170.— Shepley, 1875. 13. If the owner of a patent should, without protest, see infringement go on for a long time and until after the expiration of the patent, a court of equity would not then interfere in be- half of the patent owner. Magic Muffle Co. v. Elm City Co., 13 Blatch. 151.— Shipman, 1875. 14. " Courts of equity do not look with favor upon those who slumber over their rights." Wortendyke v. White, 3 Bann. & Ard. 35. — Nixon, 1875. 15. "There must be satisfactory proof of knowledge, or means of knowledge, before laches can be imputed. "—J6. 16. " If it be true that the suspicions of the complainant, in regard to the defendant's in- fringement, were allayed by the direct misrepre- sentations of the defendant, tlje court cannot give 494 LACHES. to him any advantage resulting from tiie lapse of time. ... In sucli an issue the burden is on the defendant." — lb. 17. Where a patent owner has known of an infringement for some years and declined to bring suit, his laches will prevent provisional in- junction. Jones et al. v. Merrill et al., 8 O. Gr. 401.— Wallace, 1875. 18. " It is a general principle of equity juris- prudence that the court will not lend its extraor- dinary aid to any claimant who has encouraged or acquiesced in an infringement of his right or unreasonably delayed in prosecuting for its vio- lation. Compensation for damages accrued and protection from future damages is all such a complainant is entitled to." — lb. 19. " If a man has a patent, . . . and he sees the world at large using it for eight or ten years, takes no steps to arrest it, sues nobody, aets up no claim, gives no warning, it is a very natural and strong reason why, under these circum- stances, he should not be permitted to come sub- sequently and arrest everybody by process of in- junction. In each and every case that question depends upon its own facts." Am. Middlings Purifier Co. v. Christian et al, 4 Dillon's C. C. 448.— Miller and Dillon, 1877. 20. Plaintiff's patent was procured in 1863, and no steps taken to force it against anybody till 1874 or 1875. It was apparent that in the original patent, issued in 1863, there were defects in the specification which rendered the patent unavailable, in tlie opinion of the plaintiff, for the purpose of a suit, and the proper reissue was procured meanwhile to cure tliat trouble. The court held that there had not been laches in en- forcing the patent unless, during all this time, the patent, as it originally stood, was in general use, and in such use as to attract the notice and attention of the patent owner. The infringe- ment commenced in 1871 or 1872. It was held that no laches had taken place. — lb. 21. " The fact that infringers have been able to keep the patent in litigation until within a few days of its expiration furnishes no reason why the patentee should not enjoy his grant dur- ing the small remnant of the term." Mumford Chemical WbrJcs y. Vice, 14Blatch. 179. — Bene- dict, 1877. 22. The complainant's patentee learned in the spring of 1876 that the defendants were manu- facturing, and claimed the right to manufacture, the articles complained of. Complainant then warned defendants to desist. Tliey did not de- sist, but became, with complainant's knowledge, the largest producers of these wares in the mar- ket. ComplainanJ; quietly acquiesced for nearly two years, and did not serve defendants with notice of his motions until March 6th and 7th, 1878. Provisional injunction viks refused be- cause of complainant's laches. Bperry v. Bib- bans et al., 3 Bann. & Ard. 260.— Nixon, 1878. 23. For a patent owner to know of an in- fringement and take no steps to stop it (in the present case for two years) constitutes laches, and the complainants who succeed to that pat- ent, in his right, are chargeable with those laches. Spring et al. v. Domestic Sewing Maeh. Co., 4, Bann. & Ard. 427.— Nixon, 1879. 24. A reissued patent was granted May 9th, 1871 ; within a year suit for infringement was brought, resulting in a great deal of litigation and a decree sustaining the patent. In 1879 the present suit was brought ; defendant sought to avail himself of complainant's laches. The court held that the proof did not show laches. Oreen v. French, 4: Bann. & Ard. 169. — Nixon, 1878. 25. "A delay in bringing action against in- fringers, when satisfactorily accounted for, is not to be treated as laches. It would be a great hardship to require patentees, who are generally poor, to institute legal proceedings as soon as an infringement was ascertained, or lose the right to the protection which an interlocutory injunc tion Jeffords. " — lb. 26. " Mere delay in seeking relief when there is no estoppel will not, in general, prevent an injunction, though it may preclude the plaintiff •from right to an account for past profit's." M. Y. Orape Sugar Co. v. Buffalo Q. Sugar Co. et al., 21 Blatch. 519.— Shipman, 1883. 37. Several cases against different parties were brought in a circuit court for the infringement of a patent. One case went to final hearing ; the patent was held valid ; tlie defendant was held to infringe ; and an appeal was taken to the Supreme Court, but was abandoned at the instance of the plaintiffs for a consideration named. The other cases were dismissed. One of the other defendants continued to use his de- vice for about seven years. Then complainants brought suit and asked for a provisional injunc- tion. The court held that the facts did not warrant an injunction. McMillan et al. v. Con- rad, 5 McCrary, 140.— Treat, 1883. 28. Where a preliminary injunction was asked for and defendant had been doing the act com- plained of for seven years, while a suit at law had been brought in 1880 and not prosecuted, and complainant was one who made its patent profitable by licenses, and dafendant was shown to be pecuniarily responsible, the injunction was denied. United Nickel Co. v. New Homs Sew- LACHES. 495 ing Mach. Co., 31 Blatch. 415. — Blatchfobd, 1883. 39. The principle recognized that laches, in prosecution for infringement, may defeat an ac- counting ; but such laches were not found to ex- ist in the case in hand, because the circumstances fail to establish acquiescence in that instance, when the infringement was known to the owners of the patent. Adams ct al. v. Howard et al., 83 Blatch. 47.— Wallace, 1884. 30. Where the complainant does not lead the defendant into any expenditure or course of conduct by his silence when he ought to have spoken, complainant has not, through laches, forfeited his right to an injunction. CMlda v. B. & F. H. Iron Works, 19 Fed. Rep. 358.— Lowell, 1884. 31. Complainant's suit on the driven-well pat- ent was brought in 1879, and defendant sovight to charge complainant with laches in bringing the suit. The patent was first sustained in 1876, and the court, remarking that a great deal of information doubtless had to be acquired about infringers between 1876 and 1879, found that complainant was not chargeable with laches. Oreen v. Barmy, 19 Fed. Rep. 420. — Lowell, 1884. 32. A bill of complaint alleged infringement of complainant's patent for thirteen years on the part of the defendants, without setting up j any excuse for complainant's delay in prosecu- 1 tion, without setting up ignorance of defendants' ! conduct, and without setting up inability on ] complainant's part to assert his rights. It was held that after such laches complainant was not entitled to an injunction. McLaughlin v. Peo- ple's B. R. Co. et al., 21 Fed. Rep. 574.— Bkew- bh, 1884. 33. Where more' than twelve years have elapsed since the bill of complaint was filed, and an acknowledged error in the evidence as to a certain date is committed, and it does not clearly appear that the defendants could not with reasonable diligence have discovered the facts which are sought to be introduced, there is too great laches to permit of the reopening of the case. WilUmantic Linen Oo. et al. v. Clark ThreadCo. etal., 33 O. G. 1356.— NrxoN, 1885. 84. A motion for provisional injunction was made in 1885. It was shown that the owners of the patent had, since 1878, known of the al- leged infringement and taken no steps, except making threats, to restrain it. It was attempted to account for this delay by the statement that the owners of the patent were quarrelling among themselves from the date of the patent until 1832, and that since the latter date they had been constantly engaged in establishing rights against other infringers. The explanation was held unsatisfactory, and provisional injunction was refused by reason of complainant's laches. Ladd V. Cameron, 25 Fed. Rep. 37. — Nixon, 1885. 35. A patent was granted August 28th. 1883. Action for infringement was commenced within six months thereafter. There was nothing in the bill of complaint to indicate that the com- plainant bad granted, or intended to grant, li- censes, or that he did not commence his suit the very day he learned of the infringement. It was • held that there was nothing in these circum- stances on which to predicate laches. Brick v. 8. I. Railroad Co., 23 Fed. Rep. 553.— Coxe, 1885. 36. For a state of facts in which laches were held to bar the maintenance of a suit in equity for infringement of a patent, see — . N. T. Grape Sugar Co. v. Buffalo O. Sugar Co. et al. , 23 Blatch. 167.— Shipman, 1885. 37. Where it appears that complainant has known for some time of defendant's infringe- ment without proceeding there against, there must be satisfactory explanation of this delay in order to secure a provisional injunction. Mundy V. Keiidall, 23 Fed. Rep. 591.— Nixon, 1885. 38. Where there has been inexcusable laches on the part of complainants and entire good faith on the part of the defendants, complainants' claim to profits is destitute of equity. (In this case a license fee of one thousand dollars was taken as a measure of damages.) Keller et al. V. Stol2erxbdch et al., 28 Fed. Rep. 81.— Ache- SON, 1886. 39. " That laches merely in applying for a pat- ent, when there was no laches in otherwise pro- tecting the invention, taay compel an inventor to be deprived of his patent, another inventor meanwhile giving the same invention to the pub- lic, is probably true." Huhel v. Dick, 28 Fed. Rep. 183.— Ship.^an, 1886. 40. " The accumulated wisdom of a multitiide of precedents has established the principle that he who invokes the protection of a court of equity must be ' prompt, eager, and ready ' in the enforcement of his rights. Equity will not encourage a sleepy suitor. As time passes, memory fails, witnesses die, proof is destroyed. and the rights of individuals and of the public intervene. Long acquiescence and laches can only be excused by proof showing excusable ignorance, or positive inability to proceed on the part of the complainant, or that he is the victim of fraud or concealment on the part of others. A mere imaginary impediment or technical di.s- 496 LICENSE. ability is not enough. The court will not en- tertain a case where it appears that the complain- ant, or those to whose rights he has succeeded, have acquiesced for a long term of years in the iafringement of the exclusive right conferred by the patent, or have delayed, without legal ex- cuse, the prosecution of those who have openly violated it." Kittle v. Hall etal., 39 Fed. Rep. 508.— CoxB, 1887. 41. "A party who purchases a patent which has for years been freely plundered by a multi- tude of trespassers does not answer the charge of laches by showing that he commenced imme- diately, after he acquired title, to bring the wrong-doers to account. " — /*. 43. A delay of seven years in prosecuting an infringer, where the delay is partially accounted for and excused, does not amount to unreason- able laches.^Ji. 43. A suit for infringement of patent was brought in October, 1886, and in the bill of complaint it was alleged ' ' that since the date of the letters-patent on June 14th, 1874, on divers times and occasions the defendants had used and sold the invention. ' ' The bill was demurred to as showing laches. The court said : ' ' This language does not imply a continuous use of the invention for such period as to bar all relief. The second point of the demurrer is accordingly overruled." Koalatype Engraving Co. et al. v. Holw ct al., 30 Fed. Rep. 444.— Thatbk, 1887. •44. "Where a bill of complaint alleges that since the date and issue of the patent it has been infringed, the bill is not to be interpreted as al- leging that the infringement was open and con- tinuous. Kittle V. De Oraaf et al., 30 Fed. Rep. 689.— CoxE, 1887. 45. A decree was made in May, 1868. De- fendants sought to open it in April, 1869. Mo- tion denied for laches. Douhleday v. Slierman et al., 6 Blatch. 513.— Blatchfokd, 1869. LIBEL UPON TITLE. Cases. 1. A court of equity has no jurisdiction to prevent a party from impugning the title of an- other person to the patent. Whitehead et al. v. Kitson, 119 Mass. 484, per curiami, 1876. 2. A court of equity may enjoin against the threatening of a patent suit and against the libel- ling of the title to a patent. Bell v. Singer M'fg Co., 65 Ga. 452.— Hawkins, 1880. 3. Complainant brought an equity suit against the defendant, setting up as his cause of action " written representations to dealers in ham- mocks that hammocks made by the orator in- , fringe a patent of the defendant, and threats of suit for the infringement contained in letters from the defendant's attorneys addressed to such dealers. " The bill did not allege that defendant threatens nor that the orator believes that he in- tends to continue such representations or threats, nor even that the orator, feared that he would. And the proof did not go In this respect beyond the bill. The court said : " Courts of equity have no jurisdiction of libel or slander affecting title to property or property rights, or other slander or libel, unless threatened or apprehended repetition makes preventative relief appear nec- essary. The remedy for past injuries of that nature is understood to be wholly at law. " Bill of complaint dismissed with costs. Palmer v. Travers, 20 Fed. Rep. 501.— Wheeler, 1884. 4. " There is no jurisdiction in a court of equity to enjoin libel on the rights or title" of a patentee, or to prevent a lawful patentee from publishing statements that he is about to bring suit for infringement. Baltimore Gar Wheel Co. et al. V. Bemis et al., 29 Fed. Rep. 95.— Cabpek- TEB, 1886. LICENSE. "License" in the Patent Acts. Act approved March 3d, 1839. Section 7. And be it furtlier enacted. That every person or corporation who has, or shall have, purchased or constructed any newly in- vented machine, manufacture, or composition of matter, prior to the application by the invent- or or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composition of matter so made or purchased, without liability therefor to the inventor, or any other person interested in such invention ; and no patent shall be held to be invalid, by reason of such purchase, sale, or use prior to the ap- plication for a patent as aforesaid, except on proof of abandonment of such invention to the public ; or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent. [Repealed July 8th, 1870,] Act approved May 27th, 1848. Sec. 2. And be it further enacted. That here- after the Commissioner of Patents shall require a fee of one dollar for recording any assignment, grant, or conveyance of the whole or any part of the interest in letters-patent, or power of at- torney, or license to make or use the thing pat- ented, when such instrument shall not exceed LICENSE. 497 one thousand words ; and the sum of three dol- lars when it shall exceed one thousand words ; which fees shall in all cases be paid in advance. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 37. And be it further enaated. That every person who may have purchased of the invent- or, or with his knowledge and consent may have constructed any newly invented or discovered machine, or other patentable article, prior to the application of the inventor or discoverer for a patent, or sold or used one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or pur- chased, without liability therefor. [Repealed June 23d, 1874.] Act approved June 23d, 1874. Sec. 4899. Every person who purchases of the inventor or discoverer, or with the knowl- edge and consent constructs any newly invented or discovered machine, or other patentable arti- cle, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or purchased, without liability therefor. Cases. 1. Where the law required the evidence of a right to use a patented invention to be in writing, a lease of a machine — embodying the invention — from defendants to plaintiff, wherein plaintiff agreed to deliver the machine to defendants at termination of the lease, was held to satisfy the requirement. Meutgen v. Kanowrs et al., 1 Wash. 168.— Wash. 1804. 3. The purchase of a license under plaintiff's patent proves nothing relative to the issue of dis- puted novelty. Evidence rejected. Evans v. Eaton, 1 Peters' C. C. 323. -Wash. 1816. 3. Evidence that alleged prior users had taken licenses from the plaintiff is admissible in plain- tiff's behalf. Euans v. Eaton, 3 Wheat. 454.— Sup. Ct. 1818. 4. Notice to defendant of patentee's right is not necessary before bringing suit for infringe- ment. Ames v. Howard et al., 1 Sumner, 482. —Story, 1833. 5. Where an inventor, while working for an- other, developed the invention at the expense of such other, and allowed such other freely to use it, this state of facts was held to constitute a li- cense to use the invention during the life of the patent. MeGlurg et al. v. Kingaland et al., 1 Howard, 202.— Sup. Ct. 1843. 6. A written conveyance under a patent, called by the court a license, gave " the right and privi- lege of manufacturing the said matches, and to employ in and about the same six persons and no more." Thereof the court said: "The li- cense in this case was an entirety, and incapable of division, or of being broken up into frag- ments in the possession of different persons. The right granted is to the grantee and six per- sons to be employed by him in making matches ; and if it be assignable, the assignment must be of the entirety of the license to the assignee, and it cannot be apportioned among different perso/i.s in severalty." Brooks v. By am et al., 2 Story, 525.— Story, 1843. 7. A license is not required to be recorded (n the Patent Oflice in order to give it effect and validity. — lb. 8. That section of the law which permits a person who uses a patented machine before ap- plication for patent is made to continue that use after patent granted does not apply to the case where the use prior to the application was with- out the inventor's knowledge and consent. Pier- j son V. Eagle Screw Co., 3 Story, 402.— Story, J1844. I 9. A patent owner gave a license under his i patent upon a stipulated royalty, with a clause I of forfeiture for non-payment for a certain time. i The licensee failed to pay the license fee for I such a certain time, and the patent owner took i judgment against him therefor. The patent ! owner revoked the license, and it was held that ! he had a right to do so, notwithstanding his i judgment for the royalty. Armstrong v. Han- ! lenbeck et al., 3 N. Y. Legal Observer, 43. — i Betts, 1844. 1 10. The act of 1839, chapter 88, paragraph 7, ] " in broad terms allows any one to use and vend a machine which he has purchased or construct- ed before the inventor applied for a patent. This, however, . . . must be construed to mean a purchaser of the inventor or his grantee, or a construction by their consent, or by his own in- genuity." Hovey V. Stevens, 1 W. & M. 290. — Woodbury, 1846. 11. Where a license upon royalty is under seal, the licensee cannot defend against an action for the royalt}' on the ground of the invalidity of the patent. Wilder v. Adams et al., 2 W. & M. 339.— Woodbury, 1846. 13. A license to run a single patented machine will not be construed as confined to a certain specific machine, unless the terms of the license expressly require that construction. Brooks et al. v. Stolley, 4 McLean, 275.— McLean, 1846. 13. "A sale by the patentee of the machine does not give an implied right to it, as such right is exclusively vested in him and such person as 498 LICENSE. may have received It from him. But this infer- ence does not necessarily follow where the sale of the machine is made by a person who has no exclusive right, but a license merely to use." — lb. 14. A licensee gave his licensor promissory notes in consideration of the license, upon the agi'eement, ' ' that, in case said notes were not paid when they, or either of them, fell due, then the said license and permission should be void, and the same shoulji revert to said. ..." Tlic court held that " the license was forfeited the moment when any of the notes came due and was unpaid ; and it was optional with the plain- tiff to resort to his remedy at common law to enforce a collection of the notes, or to treat the rights of the defendant as forfeited." Wood- worth V. Weed, 1 Blatch. 165.— Nelson, 1846. 15. The words of a license were : "I do li- cen.se and empower the said Thomas Holland and his assigns to use one machine in Boston, aforesaid, constructed according to the specifica- tion under either of said patents," etd., "dur- ing the continuance of the term for which said letters-patent were respectively granted," etc. The question raised was whether this licensee had the right to make, or procure to be made, the machine thus permitted to be used. It was held that he had this right, and the court said : " In respect to some patents the right to make, vend, or use, may be distinguishable from each other, yet they all are united in this patentee." Woodioorth v. Cuvtiss, 3 W. & M. 534. — Wood- bury, 1847. 16. In the case last referred to, the court held that a licensed machine might be repaired, and if destroyed or used up might be replaced. — lb. '17. The above license was held to be assign- able.— 76. 18. In the case last referred to, it was held that the license being granted during an original term, the right to continue the use of the partic- vilar machine then in existence continued during an extended term. — lb. 19. Where A had a license from B under which A was to pay certain moneys in stated in- stalments, and only paid a part of the instal- ments, the contract thus being partly executed, it was held that the license did not fail without some proper action of a court thereon. Gibson V. Barnard etui., 1 Blatch. 388. — Nelson, 1848. 30. Where two weeks' non-use of a licensed machine is to work a forfeitiu-e, the forfeiture accrues by the fact of such non-use. Wilson v. Stolley, 5 McLean, 1. — McLean, 1849. 21. A written agreement between the parties allowed defendants to manufacture spikes " of such kind and character as they see fit, notwith- standing their conflicting claims up to this time ' ' This was held to include hook-headed spikes iis well as other kinds. Troy Iron & Nail Facto^ry V. Corning et al., 1 Blatch. 467. — Nelson, 1849. 32. A written instrument gave defendants a right to construct a patented telegraph line be- tween Philadelphia, Pittsburg, Wheeling, Cin- cinnati, St. Louis, " and also to the principal towns on the lakes." The lakes contemplated were held to be Erie, Huron, Michigan, and Su- perior. Smith V. Selden et al., 1 Blatch. 475. — Nelson, 1849. 23. He who acquires a right to the use of a certain machine takes the right to repair it and to replace parts thereof, but not to wholly re- place such machine. Wilson v. Simpson et al. , 9 Howard, 109.— Sup. Ct. 1850. 24. A license under the Woodworth planer patent carried the right "within said limits, to dispose of the plank or other things dressed or repaired in the said machines. ' ' It also provided that the licensee, " within the limits above men- tioned," should not "sell and dispose of any plank or other ^ things dressed and iirepared in such machines, anywhere else within the United States and territories thereof. " It was held that ' ' the sale of the products of the machine was re- stricted within the limits of the county within which their operation was confined." Wood- worth et al. v. Cooh, 3 Blatch. 151. — Nelson, 1850. 35. A license to run four patented planing machines contained the condition that the li- censee should not dress plank or other material, for other persons, to be carried out of the licensed territory, and sold as merchandise. The court held that under no circumstances covdd the pat- ented article, with the privity and consent of the licensee, be sold outside the licensed territory its an article of merchandise, or with the j^rivity or consent of the licensee be sold within the terri- tory, to be carried out and resold as merchandise. Wilson V. Sherman et al, 1 Blatch. 536.— Nel- son, 1850. 36. Where a license contains a condition which the licensee violates, the license does not thereby become necessarily forfeited at the first violation, for a money cbmpensation may be an ample remedy for the injury. — lb. 37. Although a licensor and a licensee may agree as to a mode for ascertaining the value in use of the licensed thing, the licensor may give evidence otherwise of such value. W. A. & O. Steam- Packet Co. v. Sickles et al., 10 Howard, 419.— Sup. Ct. 1850. 38. " The right to make a machine is distinct LICENSE. 499 from that of using it." Bicknell et al. v. Todd et al., 5 McLecaii, 237.— McLban, 1851. 29. " It may be admitted that a licensee may repair liis machine, but he cannot construct one. He may have a right to purchase one, for the right of use necessarilj' implies the right of jpur- chase ; but tlie right to construct, as before re- marlied, is distinct from the riglit of u§e." — lb. 30. If a person should make an invention and declare his intention not to patent it, and there- upon another should make the machine, that other vi'ould thereby be licensed to use the ma- chine, after patent granted. Pitts v. Hall, 2 Blatch. 230.— Nelson, 1851. 31. A, a patent owner, sued B for infringe- ment of patent ; the suit was discontinued, and in a written agreement in reference thereto it was specified, " and it is further agreed, that the said parties may hereafter manufacture and vend spikes of such kind and' characi er as they see fit, notwithstanding their conflicting claims to this time." "And each party, in consideration of the premises, hereby releases to the other, or others, all claim, demand, and cause of action, by reason of any violation of the patent rights claimed by them as aforesaid, to the date there- of." The court held that this agreement simply settled matters between the said parties for the past, and did not give B the right to use the patent invented by A in the future. Troy Iron & Nail Factory v. Corning et al., 14 Howard, 193.— Sup. Ct. 1852. 32. " A mere license to a party, without hav- ing his assigns, or equivalent words to them, showing that it was meant to be assignable, is only the grant of a personal power to the li- censees, and is not transferable by him to an- other." — Ih. 33. For an example of a construction of con- tract, held to give defendants a right under an extended patent, where plaintiff held the legal title, see — . Bay v. Candee et al., 3 Fish. P. C. 9.— Ingeksoll, 1853. 84. When a licensee, under a license upon a royalty, gives up the business which the license contemplates, his rights revert to the licensor. Pitts Y. Jameson etal., 15 Barbour, 310. — John- son, 1853. 35. So 'iDng as the party to a contract con- nected with a license " elects to keep it on foot, and goes on under it as if it were a valid subsist- ing contract, and does not avail himself of a breach by the other party to rescind and put an end to it, so long he is bound by it, and an ac- tion may be maintained upon him for it, and he can only set up the breach by the other party by way of recoupment." — lb. 36. An exclusive license does not guarantee the licensee against the acts of wrong-doers. Baker et al. v. Mason et al., 3 R. I. 45. — Staples, 1854. 37. " Where a licensee undertakes to use a patent without paying for it the amount speci- fied in the license, . . . equity will so far en- join him, whether the license thereby becomes voidable at law or not, that unless he will pay he shall not be allowed to use. " Bay v. Harts- horn, 3 Fish. P. C. 32.— Pitman, 1855. 38. " It was entirely competent for two per- sons, being joint owners of letters-patent, whether valid or invalid, to enter into copai't- nership for the manufacture and' sale of the pat- ented machines, and to stipulate that one of them should alone conduct the business. This was a provision for the prosecution of the busi- ness in a particular mode, and not for its re- straint. " Kinsman et al. v. Parklmrst, 13 Howard, 389.— Stip. Ct. 1855. 39. Where a licensee agrees with his licensor to work an invention under a royalty, and at the time of the agreement knows of an outstand' ing claim against the validity of the patented improvement, the licensee cannot purchase such outstanding claim and set it up against the li- censor when the latter seeks to recover his roy- alty.— /J. 40. If a license fee is adopted as a rule of damages, that will operate to vest the right to use the invention in the defendant. Sickles v. Borden, 3 Blatch. 535.— Nelson, 1856. 41. " When a license is granted to any one to use a patent in the manufacture of goods, which license is accompanied with an obligation in favor of the patentee, on the part of the one to whom it is granted, to do or not to do a par- ticular thing, and which obligation is the con- sideration upon which the license is granted, he upon whom the obligation rests must perform it, and, if he will not perform it, an injunction will be granted, to restrain him from any f urt her right to use the patent under the license." Ooodyear v. Congress Rubber Co. et al., 3 Blatch. 449. — Ingersoll, 1856. 42. A written conveyance conveyed to a per- son the exclusive right " to make, use, and vend to others to construct and use," the Wood worth planing machine within certain designated ter- ritorial limits. It was held that such person thereby had the right to make and sell machines outside of those limits to such other persona only as were duly licensed to use such machines. Jenkins v. Qreenwald, 1 Bond, 126.— Lbavitt, 1857. 43. " The person having the title to a patent 500 LICENSE. for a new or improved mechanical structure has three distinct rights whicli he may dispose of separately to different individuals. These are the right to make the machine, the right to use, and the right to vend." — lb. 44. "If even a party originally obtains a li- cense from a patentee to use his invention, but neglects to pay his license price for a long time, and finally, when prosecuted, abandons his li- cense, or, while relying upon it, depends also upon other grounds, the license will be forfeited, and he will be liable as an infringer." Belly. McOuUough etal., 1 Bond, 194. — Lbavitt, 1858. 45. "A licensee is one who has transferred to him, in writing or orally, a less or different in- terest than either the interest in the whole patent, or an undivided part of such interest, or an ex- clusive sectional interest." Potter et al. v. Hol- land, \ Blatch. 206.— Ingersoll, 1858. 46 The sale of a machine and of the right to use it 'with a certain patented part imports a license to use such part. Buss v. Putney, 38 N. H. 44.— Sawyer, 1858. 47. If a person employed in the manufactory of another, and while receiving wages, makes experiments at the expense of his employer, con- structs the article invented, and permits his em- ployer to use it, no compensation for the use be- ing paid or demanded, and then obtains a pat- ent, these facts justify the presumption of a li- cense to the employer to use the invention. Slemmer's Appeal, 58 Penn. St. 155. — Shors- wooD, 1868. 48. In a conveyance under a patent " the grantors gave, granted, bargained, and sold unto Sylvanus Bartlett one of Baldwin's peg- splitting machines, and the right to use the same, and of vending to others to be used, in the county of Cheshire, excepting in the town of Hinsdale in said county, being the same ma- chine for which letters-patent were issued un- der the seal of the Patent Office of the United States." This was held to be a " conveyance, not of the right to make and construct a machine, but of the machine itself, as already constructed and in existence, and of the right to use and sell the same within the described territory. " Bald- win V. /Sibley etal., 1 Clifford, 150. — Clifford, 1858. 49. " Licenses to make and use a machine for the purposes for which it is constructed, when derived from the patentee, or from one holding a teiTitorial right by virtue of a valid conveyance from him, are not required to be recorded, and consequently need not be in writing. Contracts not required by law to be in writing may be proved by parol evidence ; and therefore a mere license to make and use the thing patented, when derived from an authorized source, may be proved in that way.' — lb. 50. " When the patentee sells to another a patented machine made by himself, or permits such other person to make the machine, the party thus authorized becomes a licensee, with the right of using and selling the machine ; but he has no interest in the patent, and it is well settled that he cannot, by virtue of such a con- tract, authorize a third person to make the ma- chine." — lb. 51. Section 7 of the act of March 3d, 1839, pro- vided, "That every person or corporation who has or shall have purchased any newly invented machine, manufacture, or composition of mat- ter prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, or composi- tion of matter so made or purchasen, without liability therefor to the inventor or other i^erson interested in such invention." With reference to this act it was held that if any other party than the inventor obtained knowledge, before application for patent, of the inventor's machine, and thereupon, at the instigation of a third party and with knowledge on the part of the third party of the surreptitiousness of the act, con- structed the patented machine for the third party, such third party would not have the right to continue to use the same after patent granted ; but if the third party had the machine construct- ed before the application for patent, after a plan authorized by the inventor, or if he consented thereto, then the third party might lawfully continue to use the machine after patent grant- ed. Kendall et al. v. Winsor, 31 Howard, 322. —Sup. Ct. 1858. 53. If an inventor makes an invention and then intentionally conceals it from the public, and during such concealment " an invention similar to or identical with his own should be made and patented, or brought into use without a patent, the latter could not be inhibited or re- stricted, upon proof of its identity with a ma- chine previously invented, and withheld and con- cealed by the inventor from the public. " (Said with reference to Section 7 of the act of Mai'ch 3d, 1839.)-7J. 53. Goodyear's patent of March 9th, 1844, mentioned a certain kind of " shirred or coi-ru- gated goods." A license under that patent in- cluded within its scope " shirred or corrugated goods," and was held to include such goods generally and others than those described in the said patent of March 9th, 1844. Bay et al. LICENSE. 501 V. Stellman et al., 1 Pish. P. C. 487.— Giles, 1859. 54. " If a mau owns two rights to manufac- ture goods, by patents of different dates, and he sells to A his right under one specifically, and to B the right to manufacture the goods gener- ally, as a matter of course the fair construction of the latter grant will be held as a conveyance of the right to manufacture under both patents ; because in the first grant, when he intends to limit it to one, he so recites on the face of the grant, and in the second he does not." — lb. 55. " When certain terms are used in a grant which have a well-known general meaning, then,' in the interpretation of such grant, such well-known general meaning must be given to the term used, unless it appears that some other or different meaning was intended by them. ' ' Day et al. y. Gary et al., 1 Fish. P. C. 424.— Ingersoll, 1859. 56. Where a party had different patents on rubber goods, and by a license conveyed the right to make and sell " shirred or corrugated goods," the license was held to extend only to such goods as were mentioned in the particular patent describing that particular kind of goods. —Ih. 57. Where a license, strictly considered, re- quired the consent of a third person, which had not been given, it was held that the licensor, who had accepted royalties, was estopped from setting up such lack of assent. Bloomer v. Oilpin et al., 4 Fish. P. C. 50.— Leavitt, 1859. 58. Where a complainant would take advan- tage of his forfeiture of a license in suing for in- fringement, that allegation must be set up in the bill.— J J. 59. Where a licensee under a planing-machine patent was not to work for less than a given sum, but did sometimes receive pay in lumber at market rates, this was held not to be an infrac- tion of the license. — lb. 60. For a discussion as to the meaning of the words " .shirred or corrugated goods" found in a license, see — . Ooodyear ct al. v. Gary et al., 4 Blatch. 271.— Ingersoll, 1859. 61. A conveyance of an exclusive right to make and sell a patented article In a certain ter- ritory during the term of the patent is a license, and the licensee need not be joined in bringing a suit for infringement. Musaey v. Whitely et al., 1 Bond, 407.— Leavitt, 1860. 62. Where a royalty contract provides for a minimum yearly royalty, and it is terminated in the middle of a year, a proportionate part of the royalty is to be paid. Oale v. Nourse, 15 Gray, 300.— Dewey, 1860. 63. Goodyear conveyed to A the right to use his patented compound, known as " vulcanized india-rubber,'' in the manufacture of "hose pipe and tube," or " conduit hose pipe and tube," and no further. He conveyed to B the exclusive right to use the said rubber ' ' in com- bination with all wringing, washing, and starch- ing machines." The licensee. A, sold rubber pipe to C, who used It in the manufacture of wringer rolls. C was held not to be an in- fringer. Metropolitan Washing Maali. Go. et al. V. Earle et al., 3 Wall. Jr. 320.— Grier, 1861. 64. A patentee licensed a railroad company to use his patent on brakes. The railroad company farmed out its railroad to one of its creditors, and this creditor was sued for infringement. lie Wiis held not to infringe. Emigli v. Cham- berlain, 1 Bissell, 367.— Miller, 1861. 65. "The value of the franchise granted to the patentee depends on the mode in which he may find it most profitable to exercise it. He has a right to divide out his monopoly, ' to make, use, and vend to others to be used, ' the thing patented, in the category of its locality, and may thus create any number of exclusive franchises, each bounded by the limits of the city, county, or state, where the patentee him- self may be treated as a trespasser, if he inter- fores. " Burr V. Duryee ct al., 2 Fish. P. C. 375.— Grieb, 1862. 66. The respondents were licensed to use two machines, " constructed according to said pat- ents, "etc. It was held that the licensees might use two machines, at all times, whether con- structed by themselves or by another. — lb. 67. A licensee of a patented machine may pur- chase and use any other machine, and if such other machine be claimed to be an infringement by the licensor, the licensee may defend himself by any plea that any other person might use.— lb. 68. Complainant licensed a railroad company to use his patent on brakes. The road was afterward consolidated with other roads, and the improvement used on the whole consolidated road. The use on the other than the old road was held to be an infringement. Emigh v. C. B. & Q. Railroad Go., 1 Bissell, 400.— Drdm- MOND, 1863. 69. Where a party is licensed to make certain goods under a patent, he is an infringer if he makes other goods under that patent. Goodyear et al. V. Providence Rubber Co. et al., 2 Cliff. 351.— Clifford, 1864. 70. For example of construction of a license, see — . Lowell M'f'g Go. v. Hartford Ga/rpet Co., 3 Fish. P. C. 472.— Nelson, 1864. 503 LICENSE. 71. A party held a license upon royalty under an original patent, which license, by its language, comprehended the extended term. The patent being extended, the licensee contended he had the right to use the patent without compensa- tion after the expiration of the original term. The court held the license in force during the extended term, and held defendant to pay the royalty. Union M'f'g Co. v. Loumbury, 42 Bar- bour, 125.— Clbkkb, 1864. 72. A license conveyed to the licensee " the exclusive right to supply a certain district with such prepared flour, and to manufacture and vend therein the patented ingredients used in the preparation of the same, promised to account with and pay over to the plaintiff a certain tariff for every barrel of flour so supplied, and for the patented ingredients, when manufactured and sold separately, to be used in this preparation." This was held a good and valid license. Seekers V. Fowler^ 2 Wall. 123.— Sur. Ct. 1864. 73. Where a license conveyed the right to make a patented thing " as mentioned in the jjat- ent of 1851," this patent being after ward, reis- sued, it was held that the licensee was not re- stricted to the precise construction shown in the 1851 patent. Burdell et al. v. Denig et al., 2 Fish. P. C. 588.— SwATNE, 1865. 74. In an action for the recovery of a license foe, defendant sought to attack the patent, but tlie court held that the defendant was not able to do this. Birdsall v. Perego, 5 Blatch. 251.' — Hall, 1865. 75. In a suit against an exclusive licensee for the recovery of license fees, it will not avail as a defense that the licensor has himself made and sold the patented machines. — lb. .76. " A recovery does not vest the infringer with the right to continue the use, as the con- sequence of it may be an injunction restraining the defendant from the further use of it. ' ' (This was said of a patent for a cotton cleaner as to _ which it was not the custom of the owner to give licenses.) Suffolk Co. v. Eayden, 3 Wall. 315. -Sup. Ct. 1865. 77. A gave a license to B under a patent, and subsequently another license under same pat- ent to C. C sold some of the patented machines to B, and B resold them. Both licenses were upon royalty. It was held that A could not re- cover from B the royalty upon the machines which B bought from C. Howe et al. v. Wood- h-idge et al., 12 Allen, 18.— Gkat, 1866. 78. "A licensee may proceed, by a petition in equity, to enjoin any party who has actually in- fringed his right under the license." Brammer V. Jones et al., 2 Bond, 100. — Leatitt, 1867. 79. A conveyance under a patent said : " I have assigned, sold, and set over unto the said Darius C. Brown, all the right, title, and inter- est which I have in said invention, as secured to me by said letters-patent in these United States, to be applied exclusively to the knitting or con- struction of harnesses for looms and for other purposes. ' ' This was held to be an exclusive license for the use of the invention as applied to the construction of harnesses for looms and for other purposes. Aiken v. Dolan, 3 Fish. P. C. 197.— Cadwalader, 1867. 80. In an action on a note given for accrued royalties, the licensee cannot defend on the ground that some other party claims that the patent in question is void. Davis v. Oray, 17 Ohio St. 380.— Bhinkeehofp, 1867. 81. A licensee, under a patent for a brake, con- veyed to the Hudson Biver Railrofid Company the right ' ' to constnict and use the said im- provement on any and all cars belonging to said company, and to use the same Improvement upon the entire length of their road, and upon all parts thereof, extending from the city of New York lo the city of Troy in said state, for and during the term for which said letters- patent are or may be granted." Thereof the court said : "Brakes belonging to the company, attached to trucks and running gear belonging to them, and so used, are undoubtedly, within the meaning of the license, used on cars belonging to the com- pany, even though the superstructures which are borne upon the tracks do not belong to the company." Hodge et al. v. Hudson River R. R. Co., 6 Blatch. 85.— Blatchford, 1868. 83. " The presumption of law in regard to , every license under a patent is, that the parties deal only in regard to the terms existing when the license is given, unless an express provision is inserted looking to a further interest. " —/6. 83. A license granted the right " for and dur- ing the term for which said letters-patent are or may be granted." This was held not to give a right under an extended term of the patent. — lb. 84. A license to the New York & Harlem Railroad Company licensed " said company, and any and till other parties that may hereafter own and operate the said New York & Harlem Railroad, to construct and use said improvement on any and all cars now or hereafter owned by said company, or by parties that may hereafter own and operate said New York & Harlem Railroad, all such construction and use to extend to and over the said New York & Harlem Railroad, and on, to, and over the roads where said cars may be employed or run on joint busi- ness. " Thereof the court said : " This license LICENSE. 503 extends only to cars owned by the New York & Harlem Railroad Company. It does not extend to cars belonging to the Hudson River Railroad Company, or to cars belonging to the New York & New Haven Railroad Company. The New York & New Haven Railroad Com- pany cannot properly be considered as within the meaning of the license as operating the New York & Harlem Railroad, in running their own cars on their road under a permission to that effect. Therefore, the license to the New York & Harlem Railroad Company does not authorize the use on its road of the brakes which are on the freight cars in question belonging to the Hudson River Railroad Company." — Ih. 85. A, a patent owner, for a valuable consid- , cration appointed B irrevocably sole agent for the manufacture and sale of the patented ma- chines. A subsequently signed the patent to C. B sought to slop C operating under the inven- tion. It was held he could not. Kempton v. Bray et al., 99 Mass. 350.— Gray, 1868. 86. Two owners of a patented tent had a con- tract with the Government, by which the Govern- ment manufactured the tent for itself and paid a royalty. One of the patent owners entered the Confederate service. It was held that the other patent owner could recover half the royalty from the Government. Buns v. United States, 4 Nott & Hunt, 113.— LoRiNG, 1868. 87. The Boston & Worcester Railroad Com- pany and the Western Railroad Company had, respectively, licenses under a patent for axle- boxes for railroads. These companies were sub- sequently consolidated by act of the Legislature of Massachusetts. The licenses of the old com- panies stipulated that the licensee might use the invention on all roads " that may be operated by said company, or may hereafter be constructed, owned, used, or leased by said company. " The present defendant was the consolidated company, and was held not to infringe. lAghtner v. B. dt 0. KB. Co., 1 Lowell, 838.— Lowell, 1869. 88. " Mere authority to use a patented inven- tion will not always, and perhaps not usually, be transferable. Whether it is or not will depend in each case on the terms or nature of the con- tract." — lb. 89. Where the licensee violates his license, and the licensor thereupon gives notice that the li- cense is forfeited, the licensor may thereafter re- cover the royalty due upon goods manufactured after as well as those manufactured before the notice. Union Wfg Co. v. Lounsbury, 41 N. Y. 368.— Daniells, 1869. 90. A licensee had a license to use a patented invention at a certain tannery. This licensee enlarged the tannery until it extended across a brook. The license was held to apply to the new parts as well as to the old. England v. Tlwmpson et al., 3 Clifford, 371. — Clifford and Lowell, 1869. 91. Although a license may give to a licensee the option of taking a new license when it ex- pires, yet if the licensee does not take such a li- cense, but refuses so to do, the licensee becomes an infringer by continuing to work under the patent, ev6n though willing to stand by the terms of the old license. — lb. 92. An instrument gave one Chaffee, ' ' his executors, administrators, and assigns, a free li- cense to use the said Goodyear's gum-elastic composition for coating cloth for the purpose of japanning, marbling, and variegate japanning, at his own establishment, but not to be disposed of to others for that purpose without the consent of the said Charles Goodyear ; . . the right and license hereby conferred being limited to the United States, and not extending to any foreign country, and not being intended to convey any right to make any contract with the Govern- ment of the United States." Of this license the court said : " It authorizes Chaffee to use it him- self. It gave him no right to authorize others to use it in conjunction with himself, or otherwise, without the consent of Goodyear, which is not shown, and not to be presumed. It was to be used at his own establishment, and not at one occupied by himself and others. Looking at the terms of the instrument and the testimony in the record, we are satisfied that its true meaning and purpose were to authorize the licensee to make and sell india-rubber cloth, to be used in the place and for the purposes of patent or japanned leather. In our judgment it conveyed authority to this extent and nothing more." Bubber Co. v. Goodyear, 9 Wall. 788.— Sdp. Ct. 1869. 93. ' ' The practical construction which the parties themselves have given to a contract by their own conduct is, in cases of doubt,, always entitled to great weight." — lb. 94. The city of Louisville advertised a con- tract for the laying of some Nicholson patent pavement ; A, licensee under tlie^ patent, per- mitted a contractor, B, to lay the pavement, giv- ing notice that, he should still: hold the city. The defendant city was held not liable. Bigelow v. City of Louismlle, 3 Fish. P. C. 603.— Bal- lard, 1869. 95. Licenses do not need to be recorded. Far- rington et al. v. Gregory, 4 Fish. P. C. 321. — LONGYEAR, 1870. 96. ' ' The purchase of apatented. thing always 504 LICENSE. carries with it the right to use the thing pur- chased, by implication." — Ih. 97. " The act of Congress makes no provision for the recording of a mere license, and therefore it is not required." If recorded, the recording affects no legal rights of any one. Chambers v. Smith et al., 5 Fish. P. C. 12.— MoKenkan, 1870. ,98. "In the absence of any statiitory provi- sion, there is no principle of equity which re- quires the owner of a patented invention to give notice to a voluntary purchaser of a licensee's right, to enable him to hold such purchaser to the restricted use and enjoyment of the invention .stipulated in the license. It is the duty of the purchaser to inform himself of the nature of the licensee's ownership and the extent of his right. If he fails to do this, he cannot complain that the patentee has misled him, or set up his own re- missness to seeure to himself a larger interest than was granted to his predecessor in the ow- nership." — lb. 99. The sale of a licensed machine at a mar- shal's sale carries with it only the right which the licensee had in the machine. — lb. 100. The contract of license of a corporation may be valid without any authorized resolution or order in writing by the trustees or directors, and although the seal used on it was the private seal of one of its officers instead of the corporate seal. Eureka Go. v. BaiUy Co., 11 "Wall. 488.— Sup. Ct. 1870. 101. One Sibley took a patent on a tent and licensed the Quartermaster-General of the United States to make it upon a royally of $5 for each tent ; afterward Sibley assigned one half his right to Burns. Sibley, during the war of the rebellion, went into the Confederate service ; thereupon one half the royalty was paid to Burns up to a certain time, when the Government ceased to pay the royalty, The Government was holden to pay Burns $2.50 on each tent. United States V. Burns, 13 Wall. 246.— Sup. Ct. 1870. 102. Where a licensee upon royalty sells out his business to another party, and the other party continues the business, the licensee is liable for the royalty. Wilder v. Stearns, 48 N. Y. 656. -Hunt, 1871. 103. " Where a patentee does not use a pat- ented machine himself, nor establish a patent fee, but manufactures the patented article, and sells it at fixed prices, seeking his compensation in the profits of the manufacture and sale at such fixed prices, and another party infringes the pat- ent by making and selling the patented article ; and where the patentee sues the party so infring- ing, and claims to recover, and does recover, the full amount of profits which he himself would have obtained on said articles had he manufac- tured and sold them at his ordinary prices, by such claim and recovery he adopts the sale made by the party infringing, and the right to use the specific articles so sold, and for which the recov- ery has been had, vests in the purchaser " lb. 104. The owner of a patent for an improve- ment in the manufacture of sewing silk, for the consideration of $1000 granted unto " Howarth & Co. the right to use the aforesaid invention for the purpose of manufacturing a quantity of silk not exceeding one hundred [100] pounds per week, during the term for which said letters- patent are granted." The firm of Howarth & Co., consisting of two partners, subsequently dissolved, one of the partners taking the busi- ness, and this partner continued the use of the invention in the .shop of, and delivered the whole product to, a third party. Injunction against his partner was refused. Belding et al. v. Tur- ner, 8 Blatch. 321. -Shipman, 1871. 105. A worked for B under agreement which said, " in regard to any patentable improve- ments which he might make, he was to receive $500 for such improvements. " He made an im- provement during such employment, applied for patent thereon, and after leaving such employ- ment took the patent and assigned it to a third party, C, who brought suit thereunder against B, the said employer of A. It was held that B was not an infringer. Also that the transactions worked a license to B. Continental Windmill Co. V. Empire Windmill Co., 8 Blatch. 295.— WOODKUFP, 1871. 106. In construing a conveyance under a patent, " parol testimony to show all the circumstances is admissible when the language may be sus- ceptible of more than one meaning, such as their knowledge of the subject-matter of the contract, and all other facts that would throw light upon the intention of the parties." May et al. v. Chaffee et al., 2 Dillon, 385.— Nelson, 1871. 107. A convejfance under letters-patent read as follows : " We, William Sisson and Clinton H. Sage, aforesaid, have assigned, sold, and set over, and by these presents do assign, sell, and set over unto the said Willard M. Fuller and David M. Ford, the sole and exclusive right to manufacture and sell machines of the said inven- tion as secured to us by the said letters-patent and assignment, in the city of Chicago, county of Cook, state of Illinois, and in no other place or places, the same to be held and enjoyed by the said Willard M. Fuller and David M. Ford, for their own use and behoof, and their legal rep- resentatives, to the fullend of the term for which LICENSE. 505 such letters-patent have been granted, as fully and entirely as the same would have been held and enjo^d by us had this sale and assignment not been made. ' ' Defendants bought one of the patented machines in Chicago from Puller & Ford, and used it outside of Chicago ; defend- ants, being sued for infringement, were held not to infringe. — lb. 108. A license to a person for a specific num- ber of years passes to the licensee's administrator upon his death. Olner et al. v. Morgan, 10 Heiskel, 322.— Nicholson, 1872. 109. The patent in question was for sewing- machines. Complainant had worked for the defendant corporation, experimented with their tools, stock, and materials, and thereby produced the improvement in question. In that factory lie made five thousand sewing-machines, on con- tract, having the improvement, his special tools going to the corporation at the end of the con- tiact. It was held that this state of facts created a license to the defendant corporation. Cliabot v. Am. Buttonhole & Overseaming Co., 6 Fish. P. C. 71.— McKennan, 1872. 110. By a written instrument, a patentee con- veyed to another party " ' two thirds of all his machinery, furnaces, engines, retorts, buildings, and materials whatsoever, now on or about the premises of the Wetherill Zinc Company, in the town of Wetherill, Penn., with rights to use all his patents and processes for the manufacture of zinc oxide, metallic zinc, retorts, etc., which said Wetherill now has, or has in contemplation to obtain, . it being understood that the patents heretofore referred to mean only those which he holds in his own right.' " Thereof the court said: " I do not . . . think it an unwarranted inference, from the words and tenor of the con- tract, that the parties intended the right to use Wetherill's patents and processes to be exercised ia connection with the buildings, machinery, furnaces, engines, retorts, and materials granted with it, and consequently that such use was in- tended to be local and restricted." And as to the words, " it being understood that the patents heretofore referred to mean only those which he holds in his own right," the court said : " The qualifying words above quoted apply only to such patents as he was the. apparent but not the real owner of, nor do they exclude patents of which his tenure was not exclusive. " Wetlierill et al. V. Passaic Zina Co. et al, 9 Phil. 385.— McKennan, 1872. 111. In considering a licen.se, " it is proper to consider facts cognate to the subject of the con- tract and within the knowledge of the parties, .to which it may, therefore, be presumed that the stipulations of the contract were intended to be applied, and by which their effect and meaning were to be governed." — lb. 112. "A license or contract for the use of an invention is subject to the same rules of con- struction which apply to any other contract. The intention of the parties, as expressed in the con- tract, is to be ascertained, and effect must be given to it accordingly." — lb. 113. " A transfer of an intei'cst in a subsisting patent will not extend beyond the term of the patent, unless there are words which indicate an intention to convey more than a jjresent inter- est. ' ' — lb. 114. The words of a license were, In part, " with rights to use all his patents and processes for the manufacture of zinc oxides, metallic zinc, retorts, etc., which said "Wetherill now has or has in contemplation to obtain." Thereof the court said : ' ' The significance of the words ' now has or has in contemplation to obtain,' is merely to individuate the patents which the con- tract was intended to embrace, and has no refer- ence to the renewal or extension of such pat- ents."— /i. 115. Where a license right expires with the original term of a patent, the right to the use of any machines derived from it ceases then. — lb. 116. The license in question conveyed " the right to use the said patented invention, to the extent of one machine. ' ' Thereof the court said ; ' ' The right conferred upon the defendant, subject to the conditions of the agreement, was a right to construct and use the machines therein men- tioned ;" and further, " the agreement conferred the right to repair, and, if necessary, to rebuild the first machine made, paid for, and put to use in the quarry. " Steam Stone Cutter Co. v. Shel- don et al., 10 Blatch. 1.— Woodruff, 1872. 117. The violation, by a licensee, of a limita- tion contained in a license, does not, in the ab- sence of a forfeiture clause', work a forfeiture. —lb. 118. Defendants had a license to use one ma- chine and used it ; they had a right to use ad- 1 ditional macTiines upon making certain pay- ' ments. They used other infringing machines, and after suit brought tendered the patent owners money as said additional payments. Defendants were held to infringe.— J J. 119. " Any assignment which does not convey to the assignee the entire and unqualified mo- nopoly which the patentee holds in the territory specified, or an undivided interest in the entire monopoly, is a mere license. Sanford et al. v. Messer et al., 1 Holmes, 149.— Sheplby, 1872. 120. " Unquestionably a contract for a pur- 506 LICENSE. chase of a portion of a patent right may be as good between the parties as a license, and en- forced as such in the courts of justice ; but the legal right In the monopoly remains in the pat- entee, and he alone can maintain an action against a third party who commits an infringe- ment upon it." — lb. 131. For an example of construction as to the effect of a license upon different contracts, see — . Hammond el al. v. Mason & Hamlin Organ Co., 1 Holmes, 396. — Sheplet, 1873. 133. The defendant company was the owner of patents for making buttonholes, owned a factory, made machines, and entered into a con- tract with the complainant corporation, by which complainant was to be sole exclusive agent for the sale of machines except in Boston and France. Complainant had bought one thousand machines. Defendant conveyed its patents to a trustee and sought to avoid the contract. Pro- visional injunction was granted. Singer M'fg Co. V. Umon Buttonhole & Embroidery Co., 1 Holmes, -353,— Lowell, 1873. 138. Where a party, having a license under a patent, transcends the right given by the license, he is an infringer. Wood v. Wells et al., 6 Fish. P. C. 883.— WooDKUPP, 1878. 134. As a general rule, a violation of the pro- visions of a license by the licensee doe.'}, not, of itself, work a forfeiture of the license. — lb. 135. " The mere fact that, in the course of business, the licensee has infringed the patent, will not work a revocation of the license, and especially in a case where tlie license covers a distinct and specific privilege, which has been paid for, once for all, and conveys, without fur- ther fee or consideration, rights which are fixed and definite. Such a privilege, conveyed abso- lutely and for a consideration paid, becomes a clear vested right, and to the extent to which it became so vested, a court of equity, as well as a court of law, is bound to recognize it." — lb. 136. The purchase of a patented article, law- fully manufactured, and sold without restriction or condition by a territorial assignee of a patent right, within his territory, conveys to the pur- chaser the right to use and sell the article in an- other territory for which another person has taken an assignment of the same patent. Mc- Kay V. Wooster et al., 3 Sawyer, 373. — Sawyeh, 1873. 137. Where the rights of him who assumes to sell a patented machine are restricted under a license, a notice to the purchaser from him is not required, as the law imposes the risk upon the purchaser as against the real owner, whether llie title of the seller is such that he can make a valid conveyance. Mitchell et al. v. Hawley, 16 Wall. 544.— Clippord, 1873. 138. A license described as " personal " can- not be transferred by the licensee to another. Houghton v. Rowley, 9 Philadelphia. 388. — Sher- wood, 1873. 139. " The sale by a person who has full right to make, sell, and use ... a machine, carries with it the right to the use of that machine to the full extent to whiqh it can be used, in point of time." Adam^ v. Burlds, 17 Wall. 453.— Sup. Ct. 1873. t/ 130. " The right to manufacture, the right to sell, and the right to use, are all substantial rights, and may be granted or conferred sepa- rately by the patentee." — Ih. 131. " In the essential nature of things, when the patentee, or the person having his rights, sells the machine or Instrument whose sole value is in its use, he receives the consideration for its use, and he parts with the right to restrict that use. The article, in the language of the court, passes without the limit of the monopoly — that is to say, the patentee by his assignee having, in the act of sale, received all the royalty or con- sideration which he claims for the use of his in- vention, in that particular machine or instru- ment, it is open to the use of the purchaser without further restriction, on account of the monopoly of the patentee. " —J6. 133. A, as a licensee under a patent, had the right to manufacture, sell, and use patented coffin lids within ten miles of Boston. B, liv- ing outside that circle, purchased one of the patented improvements in Boston, and used it outside the circle. The owner of the territory outside the circle brought suit for infringement. B was held not to infringe. The scope of the decision was specially limited to articles which perish in the first use thereof. — lb. 133. Where a defendant has a license from and a contract with the patentee, he cannot deny the validity of the patent, and refuse to recog- nize any title in the patentee, and afterward set up the license as a defense against an infringe- ment suit. Moody v. Taber, 1 Holmes, 335. — Shepley, 1874. 134. Where a party's manufacturing rights are limited by a license, and, at his insolvency, another party buys the manufactures in question, the last party, in selling these manufactures, would be an infringer in any case where the party first mentioned would be an infringer. — lb. 135. " A mere license is not apportionable, sO as to permit the licensee ... to grant to others separate rights to use or work the patent, by LICENSE. 607 subdividing the rights that may have been grant- ed to himself." Consolidated Fruit Jar Co. v. Whitney et al., 1 Bann. & Ard. 356. — Nixon, 1874. 136. " The right to make and vend, and the right to use, are completely severable ; and, while a grant of the right to make and sell to others might be deemed to imply the right in the purchasers to use the thing purchased, a pat- entee may restrict the use. The patent as effect- ually secured (o him a monopoly of the right to use it as it does of the right to make. The. pat- entee, or his assignee, may, therefore, give the exclusive right to make and sell for use within a certain territory ; and such a restriction would be entitled to enforcement." Dorsey Remlving Harvester Hake Co. et al. v. Bradley M'fg Co., 13 Blatch. 203.— Woodruff, 1874. 137. " Especially may one haVing a license to make and sell within a limited territory only deliberately contract to supply the patented invention for use in other territory, provided his manufacture and his actual negotiation of sales are within the privileged limits, and may prac- tically avail himself of the markets of the whole country. ' '—lb. 138. A licensee may maintain a suit for in- fringement against his licensor. Littlefield v. Perry, 21 Wallace, 205.— Sup. Ct. 1874. 139. A licensed B to use a patented machine in Newark, N. J. B sold the machine to C, who took it to New York and there used it. It was held that B had no right to use the machine in New York, and could convey none. Wicke v. Kleinknecht et al., 1 Bann. & Ard. 608. — Blatchford, 1874. 140. Mistake of law furnishes no ground for escaping the force of the covenants in a license, and, although the term of the license has ex- pired, the recitals and covenants in it bind and estop the licensee. Wooster v. Taylor et al., 13 Blatch. 384.— Blatchford, 1874. 141. Where defendants claim under a license, and complainant urges that the license was pro- cured by fraud, and the determination of this question rests in doubt, a provisional injunction will be denied. Beane v. Orr et al., 2 Bann. & Ard. 176.— Lowell, 1875. 143. " If the licensee ' uses the patented in- vention beyond the limits of the license or grant, or in any way not authorized by the license or grant, then there has bpen a violation of the right secured to the patentee under a law of the United States giving to him the exclusive right to use the thing patented, although such licensee per- forms, according to their terms, all the covenants entered into by him.'" Magic Buffle Co. v. Elm City Co., 13 Blatch. 151.— Siiipman, 1875. 143. " If the licensees have . . . expressly covenanted, in their agreement of license, that they will do or will not do a particular act, or will not use the invention for a particular pur- pose, a violation of such covenant is ... a breach of contract, not arising under the laws of the United States, but for which remedy maybe sought in the circuit courts of the United States, provided the citizenship of the parties gives ju- risdiction to such court." — lb. 144. Where A grants an exclusive license to B, and covenants to prosecute infringers, such agreement is not a warranty against B's being disturbed by unlicensed wrong-doers. In an ac- tion by B against A for breach of contract.. A may show the invalidity of his patent. Jackson et al. V. Allen, 130 Mass. 64.— Gray, 1876. 145. " Good faith requires that the licensee, shall give to the owner of the patent notice of his renunciation of the license, so that the privi- lege may be sold to others, before he can be per- mitted to repudiate his obligations under it." Marsh V. BodgCj 4 Hun, 278.— Gilbert, 1875. 146. So long as a licensee continues to work under his license he is estopped from denying the validity of the patent. — lb. 147. A licensee upon a royalty sold certain of the patented articles in an imfinished state, and he was holden to pay the license fee. — lb. 148. " In general, the sale of a machine to a purchaser for use carries with it the right to use it, the presumption being that whatever license fee or compensation for the use is due to the vendor is included in the price." Qil- bert & Barker M'fg Co. v. Bussing, 12 Blatch. 426.— Woodruff, 1875. 149. " When a patentee claims and recovers, not only the actual gains and profits of the man- ufacture and .sale, taut all the damages which he has .sustained therefrom, it is, at least, to be pre- sumed that such recovery embraces all the profit which the patentee would have received had he made and sold the machine to such purchaser with the like incidental or conse- quential right to use it."— /J. 150. By the court : " I do not . . . mean to aflBrm that a patentee may not have a decree against him who manufactures and sells an in- fringing machine, and also a decree against the purchaser thereof, enjoining such manufac- ture and sale, and also enjoining the future use of the infringing machine ; but only that the patentee cannot take compensation ,for the infringement, including manufacture, sale, and use, and thereafter enjoin that use for which 508 LICENSE. lie has taken compensation. The patentee, in such last supposed case, would stand very much in the condition of one who sues in trover for the value of his property wrongfully converted, and recovers and receives such value, in com- pensation for his damages. He thereby so far afBrms the conversion that his title to the prop- icrty is gone. But, to effect this, something more than the bringing of the action, and more than a verdict assessing damages, is necessary. There must be satisfaction." — lb. 151. " When a patentee gets his remuneration by patent or license fees, a recovery of the li- cense or patent fee from an infringer, and its payment, authorize him to use the particular article for which such recovery has been had. " Perrigo et al. v. Rpauldiri'j, 13 Blatch. 3S9. — Johnson, 1876. 152. " When a patentee chooses to use his in- vention himself, and finds his remuneration in the sale of the products of its use, and to pre- vent others from using his invention, it is his right, and then a recovery for profits and dam- ages will be limited to the profits and dam- ages up to the time of the recovery. Such a recovery will not carry with it any right to the further use by the infringer of the invention." 153. "Where the patentee sells his patented Instrument or machine for use by others, find- ing his remuneration in the profit of the sale of the manufactured machine or instrument, it is obvious that his interest is promoted by increase i.ig the sale of the manufactured machine or in- strument, and that into his profit enters the value of the patented invention over and above the cost of manufacture and the ordinary fair profit of the manufacture. Even if no patent or license fee is fixed, the value thereof, as a profit, enters into the selling price, and, if not capable of the exact ascertainment, may never- theless be approximated to by estimation, when necessary. When the patentee sells, he receives his profit, and thus obtains full compensation for the article sold and for the right to use while it lasts. When, for an infringement, he obtains both the profits and damages, he will be pre- sumed to have obtained a full compensation for all the injury he has sustained, and to be placed in as good position as if he had made and sold the article himself. "—J J. 154. "When a patentee manufactures and sells his patented article for use, the right to use passes by the sale. If an infringer manufac- tures and sells he must account for and pay the profits, which are to be calculated upon the principle that the gain by the appropriation of the patentee's invention is their measure. If there are damages sustained and proved by the plaintiff, beyond the profits made by the in- fringer, these also may be recovered. But when a full recovery and satisfaction from one party has been had, the patentee has obtained all that the law gives him, and the particular article or machine, if it be a machine, becomes, in cCcct, licensed by the patentee, and may bo u.sod so long as it lasts free from any further claim by the patentee. "^ — J5. 155. A license given by one of the joint own- ers of a patent is valid. Dunham v. Indianap- olis & St. Louis R. R. Co., 7 Bissell, 228.— Deu.mmond, 1876. 156. Complainant and defendants had nego- tiations with reference to a license upon royal- ty, and defendants had verbally agreed to take the same. From time to time complainant transmitted to defendants blanks for returns of royalties which were executed and returned by defendants. Subsequently complainant offered defendants a printed license, which defendant I'efused to accept, contending that the trans- mission and execution of the royalty blanks constituted a license. Complainant sued de- fendants as an infringer, and prevailed. Tilgh- man v. Hartell et al., 3 Bann. & Ard. 260. — McKennan, 1876. 157. A license which is to remain in force " until' the full expiration of the contract for which said letters-patent have been granted, and during such period as the same may be hereafter renewed or extended," has life and force under an extended term of the patent. Hammond et al. V. Mason Hamlin Organ Co., 92 TJ. S. 724. —Sup. Ct. 1876. 158. An exclusive license excludes the licenser as well as others. Ferree et al. v. Smith, 29 La. Annual, 811. — De Blanc, 1877. 159. Where a party takes a license upon a royalty, while a contest is pending over the pat- ent of which the licensee has knowledge, the party will be bound to pay the royalty. Jones et al. V. Burnliam et al. , 67 Maine, 93. — Apple- ton, 1877. 160. Procurement of service of an injunction upon a licensee by hij licensor is a breach of the license. Suitings v. Goodyear Dental Vul- canite Co., 36 Mich. 313.— Collet, 1877. 161. Where a patented pavement has been laid under a license, the fact that the license fee has not been paid does not make it an infringement. Stow V. City of Chicago, 8 Bissell, 47. — Blod- QETT, 1877. 162. A license may be proved by any kind of evidence ordinarily competent to prove such LICENSE. 609 facts. Black et al. v. Hubbard et at., 3 Baon. & Ard. 39.— Wheeler, 1877. 163. "Where an inventor, working for another, I)uts the invention into use in the factory of that other before patent granted, he gives that other a special license to continue such use after patent granted. Magoun v. New England Glass Co., 3 Bann. & Ard. 114.— Shkplet, 1877. 164. "When a patentee has infringed his li- cense, and, while holding the legal title to the patent in trust for his licensee, has been faithless to his trust, ' courts of equity are always open to the redress of such a wrong. This wrong is an infringement. Its redress involves a suit, therefore, arising under the patent laws, and of that suit the Circuit Court has jurisdiction.' " Stanley Rale & Leuel Co. v. Bailey, 14 Blatch. 510.— Shipman, 1878. 165. Defendant had granted to complainant a license under certain conditions. Complainant sued defendant for infringement of its own patent. Defendant objected that the bill did not affirmatively aver that complainant had ful- filled the conditions of the license. The court held that the conditions were conditions subse- quent, and that such averment was not neces- sary. — 1 b. 166. " Contracts touching the transfer, use, and enjoyment of patented inventions are to bo construed in the same way as contracts respecting other species of property, so as to carry into effect the intention of the parties as collected from the language employed, the subject-matter, and the suiTounding circumstances." (Said of a li- cense.) Star Salt Caster Co. et al. v. Crossman 'et at, 4 Cliff. 568.— Clippord, 1878. 167. Defendant was the licensee of complain- ant under royalty. Defendant declined to pay royalty, and was sued as an infringer. Pro- visional injunction was asked for. It appeared tliat the licensor had sold other parties licenses iit a less price than that paid defendant, in vio- lation of the license. Provisional injunction was refused for' that reason. Crowell v. Par- menter, 3 Bann. & Ard. 480. — Lowell, 1878. 168. Licensees ' ' cannot be permitted to put an end to the contract, or deny the validity of the patent, repudiate the title of the licensor, refuse to pay the stipulated royalty, and, when the validity of the patent is sustained in spite of their hostility to the rights of the owner, set up successfully, as a defence to the charge of in- fringement, the prior license which they had wrongfully repudiated, and whose terms and conditions they had refused to acknowledge and perform, upon the ground that the patent was inoperative, invalid, and void." Cohn v. National Rubber Co., 3 Bann. & Ard. 568. — Clippord, 1878. 169. " If licensees refuse to perform on their part, and repudiate the license, they may be treated by the owner of the patent, at his elec- tion, as infringers. He may have his remedy by suit upon the license, in case they have re- pudiated the license, or he may elect to treat them in future as infringers of his exclusive rights under the patent. Being infringers, they cannot set up the license in defence of a suit any more than if they had never possessed any such authority. " — lb. 170. Complainant's patent in suit was for a buckle for cotton-ties. Complainant sold the buckles with the words printed on them " Li- censed to use once only." Up to the season of 1876 there was printed on complainant's bill- heads and invoices, " The cotton-ties sold by this invoice are licensed to be used only as bal- ing-ties, and sold and purchased subject to this restriction." During the season of 1876 the complainant printed the following on the bills : " The buckles accompanying these bands are the property of the American Cotton-Tie Com- pany, Limited, and are licensed to be used one season only, the company reserving the right after such use to recover possession of them wherever found. ' ' When cotton bales on which these ties were used were opened for use at the factory, the manufacturer sold the ties and buckles to junk dealers. Defendants purchased them from junk dealers, repaired them, and sold them again. The court held that defendants were not infringers, and that in selling the cot- ton-ties complainant could not reserve the rights it attempted to. American Cotton Tie Co. v. Simmons et al., 3 Bann. & Ard. 320.~Shepley, 1878. 171. Where there is an existing license be- tween complainant and respondent, which re- spondent is ready to stand by, complainant can- not treat it as abrogated, and proceed against respondent as an infringer. Uartell v. Tilgh- man, 99 U. S. 547.— Sdp. Ct. 1878. 172. Where a license is given upon a royalty, with no provision for revocation for failure to pay royalty, it will not lie with the licensor to accomplish such revocation. Cook et al. v. Bid- well, 30 O. G. 1083.— AcHESON, 1879. 173. Three licenses of the same date are to be considered together. Hamilton v. Kingsbury et al., 17 Blatch. 364.— Blatchpokd, 1879. 174. Licenses need not be recorded. Becord- ing them has no legal effect. — lb. 175. A licensee may maintain a suit against his licensor and all parties claiming under the 510 LICENSE. licensor to prevent infringement of the patent. Perry v. Littlefield et al., 17 Blatch. 273.— Blatchford, 1879. 176. For an example of future invention held to be covered by license to that effect, see — . lb. 177. A assigned a patent to B on condition that the assignment should be void unless cer- tain notes vchich B gave to A were duly paid. The notes v?erfi not duly paid, and B reassigned to A ; but previous to reassignment B granted a license to C. The license was held void. Ab- hett et al. v. Zuai, 5 Baun. & Ard. 38. — Nixon, 1879. 178. A conveyance under a patent gave " the right to use said patented machine or any num- ber of said machines" at a given place. The court held that this instrument conveyed " the right to make machines for the use expressly granted, and this wo.uld include the right to pro- cure them to be made, and cover the making them by the one procured to make them." Steam Stone Cutter Co. v. Shorisleeves, 16 Blatch. 381.— Wheeler, 1879. 179. " It is a maxim of the common law, that any one granting a thing impliedly grants that also without which the thing expressly granted cannot be Tiad. . . . The foundation of it is the presumed intention of the grantor to make the grant effectual. . . . And it is as applicable to grants of rights under patents, whether assign- ments or mere licenses, as to any other subject, where the true intent is sought for." — lb. 180. A patent owner asked for provisional in- junction. He was accustomed to exercise his rights under the patent by granting licenses. A provisional injunction was granted, but in connection therewith the court ordered an in- quiry into the matter of complainant granting the defendant a license. Colgate v. Gold & Stock Telegraph Co., 16 Blatch. 503. — Blatchpord, 1879. 181. If the avails of sales of infringing ma- chines made by defendants are claimed and taken by the complainant patent owner, the right to the thing sold is parted with. Steam Stone Cut- ter Co. y. Wimor M'fg Co. et al., 17 Blatch. 24.— Wheeler, 1879. 182. Complainant's patent in suit was for a cotton-tie. Complainant sold its cotton-tie stamped with the words " licensed to use once only," and printed similar matter on its bill- heads. Defendants used these cotton-ties a sec- ond time, and were held to infringe. American Cotton Tie Supply Go. v. Bullard et al, 17 Blatch. 160.— Blatchpord, 1879. 183. A license recited that " Whereas, letters- patent of the United States, dated November 6tii, 1866, numbered 59,875, were lawfully granted," etc. Then, after authorizing the li- censors to revoke the license upon non-payment of royalty, the license provided that such revo- cation should not impair " the effect of the ad- mission of the validity of said letters-patent or reissue, or of the novelty, utility, and practi- cability of the said invention. ' ' It was held that the licensees had admitted the validity of the licensed patent, and that unless the recitals were introduced by fraud, imposition, mistake, or accident, the licensee could not deny their truth in an action for license fees accrued before the revocation of the license. Ewry et al. v. Gandee et al., 17 Blatch. 200.— Shipman, 1879. 184. Where a license contains a recital of the validity of the patent, evidence is not admissible to contradict such a recital. — lb. 185. "It requires very little to prove that a deed duly and carefully made and executed, and especially if it is but one of several made at the same time, some of which are admitted to have gone into effect, has been delivered. Delivery is not now a deliberate ceremony performed in the presence of witnesses, and if it is questioned, must often be inferred from conduct or other circumstances." Hammond v. Hunt et al., 4 Bann. & Ard. 111.— Lowell, 1879. 186. " If a deed is left with a stranger to be delivered to the grantee on the happening of a contingency, the first delivery is complete, and irrevocable by death or otherwise. And by a stranger is meant one who is not a party to the deetl."— J6. 187. Complainant had a process patent for manufacturing flour, and sold to another party the "exclusive right to manufacture and sell rolls for crushing grain or middlings, . . . which right or process to manufacture and sell rolls is secured to me by said patent." Held, that com- plainant had the right to sue in his own name for infringement. Downton v. Yaeger Milling Co., 3 McCrary, 414.— Dillon, 1879. 188. A licensee may defend against a patent on the ground of its invalidity, and where the Gov- ernment is the licensee it may do likewise. Morse Arms M'fg Co. v. United States, 16 Nott. & Hop. C. C. 296.— Davis, 1880. 189. As to when a licensee may and when he may not defend against a suit for compensation for the use of the patent, on the ground of the invalidity of the patent, see — . lb. 190. It seems that acquiescence by a patent owner in the embodiment of the invention in a machine estops him from claiming the machine to be an infringement. Downton v. Milling Co., 1 McCrary, 26.— Treat, 1880. LICENSE. 511 191. Where a decree of infringement and for perpetual injunction is issued by consent of parties, tiie decree and injunction are not an- nulled or affected by a conditional license after- ward granted respondents by complainant. Pentlarge v. Beestonetal.,\?:'B,'[a,\,c)i. 38. — Bene- dict, 1880. 193. Doubted — in view of Hartell v. Tilghman, 99 U. S. 556 — whether, in the absence of a ter- mination of a license by mutual agreement, a revocation of a conditional license can be effected by giving notice merely. — lb. 193. A licensor having granted a single li- cense under a patent to five persons, three of the licensees, by agreement with the licensor, sur- rendered their interest therein to the licensor. Held, that this was permissible by law, and fur- ther that the releasors need not be joined as plaintiffs in an action under the license against the licensor. Theberath et al. v. Celluloid M'fg Co., 3 Fed. Kep. 143.— Nixon, 1880. 194. A license taken by defendant giving it permission to sell goods it had on hand when the patent issued is " rather in the nature of a compromise to save trouble than a deliberate ac- knowledgment of the validity of the patent." Wldte V. Harris' Sons M'fg Co., 3 Fed. Rep. 161.— Lowell, 1880. 195. Defendant had taken a license from com- plainants which provided for returns, payments, etc., and for written revocation if defendant failed to keep his agreement. Complainants proceeded against defendant, by bill of com- plaint, as an infringer, without averring the writ- ten revocation. Bill demurred to and demur- rer sustained. White et al. v. Lee, 3 Fed. Rep. '233.- Lowell, 1880. 196. " In some few patent cases, beginning with Brooks v. Stolley, 23 McLean, 523, it has been held that the jDatentee enjoyed the unusual privilege of treating a breach of covenant as if it, of itself, worked a forfeiture. No doubt the parties may agree that such an effect shall fol- low ; and this will account for some of the de- cisions. The others of this sort are overruled by Hartell v. Tilghman, 99 U. S. 547." A breach of a condition of a license by a licensee does not, of itself, work a forfeiture of the license. — lb. 197. By the court : " The license to Angelina Brown was revocable, and was revoked by the conveyance of the title of the licensors. ' ' Faulka etal. V. Kaw/p et al., 17 Blatch. 433.— "Wheel- er, 1880. 198. Licenses do not need to be recorded. Hamilton V. Kingsbury et al., 17 Blatch. 460. — Blatchfohd, 1880. 199. The patentee, Fosburgh, gave an exclu- sive license to Dare, with royalties to be paid at the end of each quarter or within ten days there- after. Fosburgh then -Went into Dare's employ. At the end of the first quarter, and before the expiration of the ten days' grace. Dare notified Fosburgh that the royalties were 'ready for him at Dare's office. He did not call, and the roy- alties were not paid in the specified time. Fos- burgh then made an exclusive license to defend- ant, the latter having knowledge of Dare's li- cense, but afterward accejpted royalties from Dare. Defendant proceeded to manufacture, and Dare brought suit for infringement. The license to Dare was held valid, and defendant found to be an infringer. Hare v. Boylston, 18 Blatch. 548.— Blatchford, 1880. 300. The construction of a patented machine, by defendant, before issue of patent, does not authorize defendant to use, after patent granted, other than the machine made prior to the date of the patent. Brickill et al. v. New York, 18 Blatch. 273.— Wheeler, 1880. 201. A license which authorizes the licensee to use the patent " for his own proper business" does not authorize him to permit another to use the patent. Putnam et al. v. Hollander et al., 19 Blatch. 48.— Blatchford, 1881. 303. A suit being brought charging defendant as an infringer, by reason of forfeiture of the license from complainant to defendant, through breach of the condition of a license, the bill was dismissed (under authority of Hartell v. Tilgh- man, 99 U. S. 557). Adams v. Meyrose, 2 Mc- Crary, 360.— Treat, 1881. 203. A company which had the right to use, but not the right to vend for use, the patented machines, sold them to defendant, telling de- fendant that it was doubtful if the right to use passed with the machines. Held, that no right to use passed to defendant. Union Met. Car- tridge Co. V. U. a. Cart. Co., 7 Fed. Rep. 344.— Lowell, 1881. 204. Where defendants set up a license, and its existence is disputed, the defendants must offer preponderating evidence in order to prevail. Watson et al. v. Smith etal., 7 Fed. Rep. 850. ■ — Wheeler, 1881. 205. The mere taking of a license under a patent, there being no covenants, etc., as to va- lidity of the patent, does not estop the licensee from denying the validity of the patent in a suit against the licensor. J^at. M'fg Go. v. Meyers, 7 Fed. Rep. 355.— Swing, 1881. 206. A license to a railroad company " to make and use all of said improvements and in- ventions so patented, ... for and during the several terms of the patents, and any extension 513 LICENSE. of either of the same in, upon, and about the locomotive engines used by said . . . company, on the . . . railroad, or on any road or roads now owned, or that may hereafter be owned or operated by the said company," carries the right to use said inventions on locomotives thereafter acquired, and on roads thereafter coming under the control and operation of said company. Matthews v. Pa. B. B. Co., 8 Fed. Rep. 45.— Butler, 1881. 307. Where a license is granted to use a cer- tain machine, the patented part whereof is a combination, parts of the machine which become worn out may be replaced, and the use of the machine continued under the license. If the patented part had been a single part of the struc- ture, and that part had worn out, the user would have no right to replace it. Oottfried v. Seipp Brewing Co., 10 Bissell, 368.— Blodgbtt, 1881. 208. The owner of a patent who sees machines made under his patent go into use with silent acquiescence, and then consents to the sale of the machines at a sheriff's sale, parts with the right to afterward object to the use of the ma- chines. Detweiler v. Voege et al., 19 Blatch. 483.— Benedict, 1881. 209. Defendant filed a plea to complainants' bill setting up rights under the patent emanating from one of tlie complainants, and embodied in writing. Of this the court said : " The writing under private signature between Lillienthal and Moses is certainly not admissible until genuine- ness is established. The contract between Moses and Washburn having been acknowledged by the parties before a notary public and two wit- nesses, may have the same effect as an authentic act and prove itself." LilUenlTialetal. v. Wash- burn, 8 Fed. Rep. 707.— Pardee, 1881. 210. The fact that defendants formerly had a license from complainant under his patent, and put the patent stamp on their goods, does not estop them from contesting the patent on the question of infringement. Blatherwick v. Carey et al., 10 Bissell, 494.— Blodgett, 1881. 311. A written transfer contained the follow- ing language : "I hereby sell, assign, and set over to . the exclusive right to manufac- ture and sell rolls for crushing grain middlings or other substances, which right or process is secured to me under patent numbered 162, 157," etc. Tlie patent was a process patent. Held, that the title to the patent did not pass with this transfer. Bownton v. AUis, 9 Fed. Rep. 766. -Dyer, 1881. 212. One Stromberg sold to defendant the ma- chine complained of. Stromberg, with others, subsequently owned the patent sued on, which covered the machine, and Stromberg, selling out to his co-owners, took a release validating all Stromberg's past acts in the premises. This was held to protect and license defendant's machine. Oottfried v. MiUer, 10 Fed. Rep. 471.— Dyer, 1881. 213. A license to parties, permitting them to manufacture at their shop, in a certain place, is not transferable, and is a license to make only. Searles v. Bouton et al., 20 Blatch. 436. — Wheeler, 1881. 314. One Stromberg sold to defendant the machine complained of, with the right to use it, Stromberg at that time owning no interest in the patent sued on. Stromberg subsequently owned an interest in such patent, and on his sell- ing out to complainant took a release from com- plainant ratifying all his former acts as to said patent. Held, that complainant's suit would not lie. Gottfried v. Miller, 104 U. S. 521.— Sup. Ct. 1881. 215. A bill in equity will lie to nullify a for- feitable license. Adams v. Meyrose et al., 10 Fed. Rep. 671.— Treat, 1882. 316. " The rights of an owner of a patented machine, without any conditions attached to his ownership, to continue the use of his machine during an extended term of the patent, is well settled. . . Power to sell the machine, and transfer the accompanying right of use, is an accident of unrestricted ownership." Union, Paper Bag Mach. Co. et al. v. JVixcm etal., 105 U. S. 766.— Sup. Ct. 1883. 217. A license to defendant being found in de- fendant's possession, tlie burden of proof is upon complainants to show that defendant has no right to this license. Mellon et al. v. B. L. W. B. Co., 31 O. G. 1616.— Sup. Ct. 1882. 318. Where a complainant sets up facts amounting to a license, and the defendant denies the validity of the patent, the defendant cannot avail itself of such license. Shaw^ v. Colwell lead Co., 30 Blatch. 417.— Wheeler, 1881. 319. An assignment of a patent operates as a revocation of a revocable license ; and a mere permission to make and sell is a revocable li- cense. — lb. 230. A license by a corporation, referring gen- erally to its patents, will not include a patent belonging to an officer of such corporation. — lb. 321 . The fact that defendant incurred expenses in the practical development of complainant's patented invention does not operate to give de- fendant a license under the patent. — lb. 322. Complainant sold its patented cotton- tie stamped with the words " Licensed to use once only. ' ' Cotton manufacturers, in removing LICENSE. 513 these ties from cotton bales, necessarily cut the ties in two. Defendants bought the ties in that condition, reconstructed the band, and sold them. Defendants were held to infringe. Am. Cotton Tie Co. v. Simmons et al., 106 U. S. 89. —Sup. Ct. 1883. 323. A licensee being sued for royalties, made .the defense that the patent was invalid. The court said : " The law is, I think, that a plea or answer that the patent is void is not of itself a sufficient defense, but that evidence of what may be called an eviction is sucia defense. " White et al. V. Lee, 14 Fed. Eep. 789.— Lowell, 1883. 224. By the court : ' ' Whatever right to use a patented machine a defendant, in an execution, may have, passes with the machine when sold by the sheriff to his vendee." Wilder v. Kent etal, 33 O. G. 831.— Acheson, 1883. 235. "Where complainant has had a decree for the recovery of its profits upon infringing ma- chines against one party, such machines go to a third party free from liability to complainant. And the injunction restraining the use of such machines pendente lite will be dissolved. Steam Stone Gutter Co. v. Sheldons et at., 21 Blatch. 360.— Wheeler, 1883. 336. By the court : " The damages recovered by the orator are not for a sale for use, which would probably free the whole use." Matthews V. Spangenberg, 15 Fed. Rep. 813. — Wheeler, 1883. 327. By the court : " If the worliman, by us- ing the tools and time and money of his em- ployer, with his consent, makes an invention and applies it in his employer's business, the employer may continue to use it. If the improvement is a process, it has been held that the employer may continue to practise the process for the whole period of the patent. . . . But if the invention pertains to a machine, it is understood that only the specific machine, or machines which have been so made are licensed. ' ' Wade v. Metcalf et al, 16 Fed. Rep. 130.— Lowell, 1883. 328. The principle of the decision last quoted applies to an invention made by a member of a firm, and the resulting license does not end with the dissolution of the employer firm. — lb. 329. By the court : " The more commonly ex- pressed and therefore presumably better judicial opinion is to the effect that when the license has been revoked by the plaintiff, and the bill treats the defendant as a naked infringer, he is at lib- erty to avail himself of any defence ordinarily opcu to any defendant who is charged with in- fringement." Wooater y. Singer M'fg Co., 23 O. G. 2513.— Shipman, 1883. 330. A decree for nominal damages recovered by a patentee against the manufacturer of in- fi'inging machines does not operate to license those machines, so far as users of such machines are concerned. ' ' The infringement by the man- ufacturer and the infringement by the user of an infringing machine are separate trespasses, and the judgment because of one is no bar to an action for the other. To create a bar there must be satisfaction, and nominal damages is not sat- isfaction. " This rule is not altered, because tho nominal damage against such a manufacturer was found under a stipulation entered into by the parties. Blake v. Oreemoood Cemetary, 21 Blatch. 333.— Benedict, 1883. 231. " Where a patentee recovers from an in- fringing manufacturer full damages and profits on account of the infringement, the purchaser, who is a user of the machine, will be protected in such use against a suit for infringement as he would be if he were a licensee from the pat- entee. . . To effect such a result it must fur- ther appear that the patentee's claim to profits and damages against the manufacturer has been actually paid and satisfied." Allis v. Stowell, 16 Fed. Rep. 783.— Dyer, 1883. 333. Where a license was granted before the patent issued, and referred simply to the inven- tion as set out in the application, and the appli- cation was afterward changed by amendment, the license was held to apply to the resultant , patent. Kelly v. Porter etal., 8 Sawyer, 483.— Sawyer, 1883. 233. Where there was nowhere in a license any limitation as to time and no right of revo- cation reserved in terms, it was held that the li- cense was irrevocable unless by some fault of the parties. — lb. 234. Where a license granted the use of pat- ented machines on royalty, at the same time mentioning the value of a certain number of the machines, it was held that the machines were not sold outright, but remained within the scope of the license. Porter Needle Co. v. Nat'l Needle Co., 17 Fed. Rep. 536.— Lowell, 1883. 235. There are cases in which " the ownership of the machine will not necessarily carry with it the right to use it without the permission of the patentee." — lb. 236. Where defendant, under the stress of a provisional injunction, took a license and paid royalties, and the patent was afterward adjudged invalid, it was held that defendant could not re- coyer back the royalties he had paid, so long as he had not suffered actual eviction. McKay v. Jackman, 17 Fed. Rep. 641.— Wheeler, 1883. 237. Where a defendant repudiates his license, he cannot use It as a defence, when sued as an 514 LICENSE. infringer. Fetter et al. V. NewTiall, 31 Blatch. , 445.— Wheeler, 1883. 238. Where complainant lias an exclusive li-. cense from the patentee, the patentee will be en- joined from manufacturing under the patent until the license is set aside for good reason. Godda/rd v. Wilde et al., 17 Fed. Rep. 845.— Colt, 1883. 239. By written instrument a patent owner conveyed to one Morgan the right to use the in- vention in question for five years within a speci- fied territory. The court held this to be a 11' cense not descending to Morgan's administrator after his death, and said : " The instrument of license is not one which will carry the right con- ferred to any one but the licensee personally, unless there are express words to show an intent to extend the right to the executor, administra- tor, or assignee, voluntary or involuntary." Oliver et . 44. A state statute of limitation is not applic- able to actions for infringements of patent rights. May^. Cass Co., 30 I*ed. Rep. 762.— Shiras, 1887. 45. A state statute of limitation cannot be pleaded in bar of an action for infringement of a patent. May v. County of Balls, 31 Fed. Rep. 473.— Thayer, 1887. LOST ART. Cases. 1. One James Conner made a safe of a cer- tain construction, for his own use, between the years 1829 and 1833, and continued to use it un- til 1838, when it passed into other hands. " It was kept in his counting-room and known to the persons engaged in the foundry ; and after it passed out of his hands, he used others of a different construction. It does not appear what became of this safe afterward. And there is nothing in the testimony from which it can be inferred that its mode of construction was known to the person into whose possession it fell, or that any value was attached to it as a place of security for papers against fire ; or that it was ever used for that purpose." Complainants' patentee took a patent for such a safe June 1st, 1843. The court was of the opinion that the patent was not invalidated by the Conner safe, saying : " If the Conner safe had passed away from the memory of Conner himself, and of those who had seen it, and the safe itself had disappeared, the knowledge of the improvement was as completely lost as if it had never been discovered. " The court said that Conner might have omitted to test his safe and also to bring it into public use, and neither circumstance would prevent it from being an anticipation of the patent ; provided its mode of construction was still in Conner's memory before recalled by the patent. Oayler et al. v. Wilder, 10 Howard, 477.— Stjp. Ct. 1850. 3. "If the original inventor of the machine abandons the use of it, and does not take a patent first, no other person can entitle himself to a patent for it. There are exceptions to this general rule, as in the case of a lost art, where the knowledge of it has been lost for ages." And if, in the case of a patented safe, it be found that prior to the invention of the patentee the improvement had been put into practice, but that the safe itself had disappeared and the knowledge of the improvement was as com- pletely lost as if it had never been discovered, then the patent might stand ; but if the prior safe was in existence and use, and the knowl- edge of it not entirely forgotten and lost, the omission to bring it into public use or notice would not give -the inventor a right to the pat- ent. The earlier inventor might have aban- doned its use and been ignorant of the extent of its value, yet if the invention was substantially the same, the later inventor would not upon that ground be entitled to a patent provided the earlier safe and its mode of construction were still in the memory of others. Rich et al. v. Lippincott et al., 3 Fish. P. C. 1. — Griek, 1853. MALICIOUS INFRINGEMENT SUIT. Cases. 1. A patent owner sued another person for alleged infringement of patent, and in the pro- ceedings such person was imprisoned. Subse- quently such person brought suit against the patent owner for malicious suit and imprison- ment. The court held that "if there was an actual infringement upon the defendant's patent by the plaintiff, and if the defendant really be- lieved that there was such an infringement, his belief being reasonably founded, there was proper cause for the institution of the suit, and NATUKE OF PATENT PRIVILEGE. 533 the plaintiff cannot recover ; but if there was no infringement, and the defendant had no reason which would have induced a person of ordinary sagacity to believe that his rights had been tres passed upon, there was no proper cause, and from its absence malice may be inferred by the jury unless disproved by the other evidence in the cause." Beach v. Wheeler, 34 Pa, 213. — Knox, 1855. MECHANICAL EQUIVALENT. [See "Equivalent — Mechanical."] MECHANICAL SKILL. [Comprised under " Invention — Insufficiency of."] MODEL. Cases. 1. The specification, the patent, the drawing; and the model are all to be taken as parts of the description. Whitney et al. v. Mmmett et al., 1 Bald. 303.— HoPKiNSON and Bald. 1831. 3. " There is no kind of testimony that is more reliable in regard to the true structure and character of a machine than an accurate model. It is a witness that cannot lie." Swift et al. v. Wldsenet al., 3 Bond, 115.— Leavitt, 1867. 8. "Where experts of equal intelligence testify in direct opposition to each other, models form e.TCellent evidence for the court. Crompton v. Belknap Mills et al., 3 Fish. P. C. 536.— Clark, 1869. 4. Models of machines, when rightly compre- hended, afford very persuasive evidence. Gar- ter et al. V. Baker et al., 1 Sawyer, 512. — Saw- yer, 1871. 5. The existence of a feature in a model where it is not referred to in the specification wiU not help the patentee on the question of construction of his patent. Ba/rry v. Chigenheim et al., 5 Fish. P. C. 453.— McKbnnan, 1878. 6. A certified copy of a Patent Oflice model is not conclusive evidence of the character of the model. Johnson v. Beard, 2 Bann. & Ard. 50.— WOODKUEF, 1875. 7. " The court can always best judge from models whether one machine differs in principle and mode of operation from another. ' ' Birdsall V. Eager stown Agricultural Implement M'fg Co., 1 Hughes, 59.— Bond and Giles, 1877. 8. "The statute has not placed the lack of| specimens among defences to a patent." Bad- isehe Anilin & Soda Fabrik v. Cochrane et al.,lQ Blatch. 155.— "Wheeler, 1879. 9. "The model " of an alleged anticipatory patent, " if differing from the description and drawings of the patent, cannot be regarded to effect" complainant's patent. Thatcher Heating Co. V. Spear et al., 1 Fed. Bep. 411.— Blatch- FORD, 1880. 10. It seems that, in considering a reissue, the character of the model filed with the application for the original patent is a matter for proof. Meyer et al. v. Goodyear Ind: Eubber Glove M'fg Co., 20 Blatch. 91.— Shipman, 1881. 11. Although reissue drawings and specifica- tion may show and describe parts not shown or described in the original, yet, in the absence of the model appurtenant to the original appli- cation, it cannot be assumed that the change is an unwarranted one. Hendy v. Golden State & Miners' Iron Works, 8 Sawyer, 468. — Sawyer, 1883. 13. "While the model appurtenant to the applica- tion for the patent in question is not to be resorted to for the purpose of construing the patent, except in cases where the specification is ambiguous or uncertain, still, where there is doubt as to what the patentee means by the language used, the court may resort to an inspection of such model for ascertaining the patentee's meaning. Frayer et al. V. Gfltes & Scoville Iron Works, 23 Fed. Rep. 439.-— Blodgbtt, 1884. NATURE OF PATENT PRIVILEGE. Cases. 1. An original inventor has an inchoate right from the time of making the invention. Evans V. Jordan et al., 1 Brock. 248. — Marshall, 1813. 3. For a lengthy diatribe against patents, see — . Thompson v. Haight, 1 U. S. Law Jour. 563. —Van Ness, 1823. 3. " Every patent is a monopoly, and nothing can justify it but the natural right of property which a man has in the products of his own labor and ingenuity. "With this exception, it is in derogation of common right, and it should be strictly confined to the case excepted." Kem- per's Application, 9 MacArthur's P. C. 1. — Cbanch, 1841. 4. " That a man should be secured in the fruits of his ingenuity and labor is a sound maxim of the common law. And it seems difficult to draw a distinction between the fruits of mental 524 NATUEE OF PATENT PEIVILEGE. and physical labor." Brooks et al. ■v.Bicknell et al, 3 McLean, 250.— McLean, 1843. 5. " The patent laws are not now made to en- courage monopolies of what before belonged to others or the public — which is the true idea of a monopoly ; the design is to encourage genius in ad- vancing the arts, through science and ingenuity, by protecting its productions of what did not before exist, and of what never belonged to another person or the public." Dawll et al. V. Brown, 1 W. & M. 53. — WooDBURr, 1845. 6. "At common law the better opinion prob- ably is, that the right of property of the inventor to his invention or discovery "passed from hiui as soon as it went into public use with his con- sent ; it was then regarded as having been dedi- cated to the public as common property, and subject to the common use and enjoyment of all." By grant of patent the law has imposed upon an invention " all the qualities and char- acteristics of property for the specified period, and has enabled" the inventor "to hold and deal with it the same as in case of any otlier de- scription of property belonging to him, and on his death it passes, with the rest of his personal estate, to his legal representatives, and becomes part of the assets." Wihon v. Rousseau et al., 4 Howard, 646. -Sup. Ct. 1846. 7. " An invention possesses value beyond the first patent on it ; being Taluable for purposes abroad on the ground of a patent there, and also for a renewal a:t homo, independent of an un- expired period of the original term which might go as assets to an administrator." Woodworth et al. V. Hall et al., 1 W. & M. 248.— WooD- EUKY, 1846. 8. " The policy of the law which protects in- ventors is wise. It stimulates genius by endeav- oring to secure a reasonable compensation to those who have spent their time and money in producing something of utility to the public. It is not a monopoly the inventor receives. In- stead of taking anything from the public, he con- fers on it the greatest benefits ; and all he asks and all he receives is that for a few years he sliall realize some advantage from his own ci'ea- tion ; not that he withholds his machine or dis- covery from the country, but that in distribut- ing it he may receive a small compensation for the great benefit he confers. The triumphs of the inventor are intellectual triumphs. His demonstrations are made through mechanical agencies, but these in the highest degree are at- tributable to mind ; and the same may be said of useful, inventive mechanics generally. The usage of their thought embraces the system of natural philosophy in all its practical bearings ; and, in carrying out their views, the highest de- gree of mechanical ingenuity. Through the labors of these men our country has been ad- vanced by machinery on the land and on the water ; in the saving of labor and in a rapid and increasing intercourse, and especially in the communication of intelligence in the last forty years more than could have been hoped for, without their instrumentality, in many centu- ries." Parker v. Haworth, 4 McLean, 370. — McLean, 1848. 9. The right to patents is created by Congres- sional legislation. Dudley v. Mayliew, 3 Com- stock, 9.— Strong, 1849. 10. "The exclusive right of the inventor to make and vend his newly discovered implement is wholly statutory." — 7J. 11. "A patent right that shall compensate the inventor is not a monopoly in the general sense of that term. The inventor takes nothing from society. He confers upon it a benefit by his labor and ingenuity, and it is reasonable that lie should be paid for such services ; and the law designs to give him nothing more than a compensation : he is entitled to this by the im- mutable principles of justice, and it is believed to be given to him by the laws of all civilized na- tions. " Bloomer v. Siolley, 5 McLean, 158. — McLean, 1850. 12. " The invention which is set forth in let- ters-patent belongs to the inventor as rightfully as the house he has built or the coat he wears. It cannot detract from the dignity of his title that the subject of it is of his own creation, his thought, conceived and developed and matured in the recesses of his mind— that it has cost no man else anything ; and he asks nothing in re- turn for the contribution it makes to the general wealth and haj)piness, but that security of enjoy- ment, during a limited period, which the laws engage for all other property without limitation of time and without stipulating a price. It would be a reproach to the judicial system if any ownership of this sort could be violated profit- ably or with impunity." Sloat v. Patton, 1 Fish. P. C. 154.— Kane, 1852. 18. "Patentees are not monopolists. This objection is often made, and it has its effect on society. The imputation is unjust and impolitic. A monopolist is one who, by the exercise of the sovereign power, takes from the public that which belongs to it, and gives to the grantee and his assigns an exclusive use. On this ground monopolies are justly odious. It enables a fa- vored individual to tax the community, for his exclusive benefit, for the use of that to which NATUKE OF PATENT PEIVILEGE. 525 every other person In the community, abstract- edly, has an equal right with himself. ' ' Under the patent law this can never be done. No exclusive right can be granted for anything which the patentee has not invented or discov- ered. If he claim anything which was before known, his patent is void, so that the law re- pudiates a monopoly. The right of the patentee entirely rests on his invention or discovery of that which is useful, and which was not known before. And tlie law gives him the exclusive use of the thing invented or discovered, for a few years, as a compensation for ' his ingenuity, labor, and expense in producing it. ' This, then, in no sense partakes of the character of monop- oly." Allen V. Hunter, 6 McLean, 303.— Mc- Lean, 1855. 14. "The monopoly is not a matter of com- mon right, but purely of statutory grant." Hunt V. Howe, 1 MacArthur's P. C. 366.— MoR- SELL, 1855. 15. " Congress legislates upon tlie subject of patents under the provision of the Constitution, which declares that Congress shall have power ' to promote the progress of science and the use- ful arts by securing for limited times, to authors and inventors, the exclusive right to their re- spective writings and discoveries. ' The patent acts have been passed for the promotion of the useful arts, for the ultimate benefit of the public, and not for the sole benefit of inventors and pat- entees. It is the policy of the Government, and the intention of the acts of Congress, to promote the progress of the useful arts by offering re- wards for useful inventions. These rewards have beenhitlierto offered in the form of special and exclusive privileges for a limited time. It is for the ultimate benefit of the public that such privileges are granted, allowed to operate, and protected for limited times, for the direct benefit of inventors and their assignees and grantees. But there is another and less remote object to be attained by the privileges and pi'otection thus afforded. These privileges are granted for the additional purpose of inducing inventors and their assignees and grantees to make the re- quired expenditures and investments in order to put the patented inventions in practice and thereby to give the public the benefits to be de- rived from a successful use of the inventions, at the earliest day and to the fullest extent re- quired by the public interests. The value of most inventions is, at first, quite uncertain, and the success of those undertaking to put them in practice is by no means sure." Day\. Union India Rubber Co., 3 Blatch. 488.— Hall, 1856. 16. " For the purpose of promoting the prog- ress of the useful arts. Congress has the power, under the Constitution of the United States, to give for a limited time to inventors the exclusive right or privilege of using their inventions ; and when that right is given in accordance with the law of Congress adopted for that purpose, that exclusive privilege becomes the property of the inventor, and any person who takes that property from him by an unauthorized use of the invention patented becomes an infringer of his rights, and is liable in damages precisely as though he had been guilty of taking any other property belonging to tlio jDatentee. ' ' Conover V. Roach et al., 4 Fish. P. C. 12.— Hall, 1857. 17. A patent for a new and useful thing " is a valid grant of right, and gives to the patentee as good title to it as . . to any property. " Pop- penlnisen v. iV". Y. Oiitta-Percha Comb Co., 3 Pish, P. C. 62.— Ingersoll, 1858. 18. " Where a patent is valid, the rights se- cured by that patent are as much secured to the patentee as the right which you have to the houses in which you live, and which are madu your property by the deeds which you have in your jDossession ; and they are as much to be protected as any other right to any other species of property. If the patent is valid, it secures to the patentee rights which should be protected ; and the one right should be no more protected than the other." Waterbury Brass Co. v. N. W. & Brooklyn Brass Co., 3 Fish. P. C. 43. — Ingersoll, 1858. 19. "It is undeniably true that the limited and temporary monopoly granted to inventors was never designed for their exclusive profit and advantage ; the benefit to the public or com-* munity at large was another, and doubtless the primary object in granting and securing that monopoly. This was at once the equivalent given by the public for the benefits bestowed by the genius and meditations and skill of individ- uals, and the incentive to further efforts for the same important objects. The true policy and ends of the patent laws enacted under this Gov- ernment are disclosed in that article of the Con- stitution, the source of all these laws — viz., 'to promote the progress of science and the useful arts,' contemplating and necessarily implying their extension and increasing adaptation to the uses of society." Kendall et al. v. Winsor, 31 Howard, 323.— Sup. Ct. 1858. 30. " The inventor who designedly, and with the view of applying it indefinitely and exclu- sively for his own profit, withholds his invention from the public, comes not within the policy or objects of the Constitution or acts of Congress. He does not promote, and, if aided in his design, 526 NATURE OP PATENT PEIVILEGB. would impede the progress of science and the useful arts. And with a very bad grace could he appeal for favor or protection to that society which, if he had not injured, he certainly had not benefited or intended to benefit." — n. 21. " All the rights and powers affecting the subject of patents arise out of positive law, and have been so benignly regarded by the f ramers of- our institutions that they have been especially secured and confided to the care of the Federal Government by the provisions of the Constitution itself. One portion of the law is not to be con- strued more rigidly than another, but all the parts, having their common source in the stat- utes, are to be interpreted with a wise liberality of construction, in furtherance of justice, and to give equal aid and facility of vindication to every right which grows out of patentable dis- coveries." Babcock v. Degener, 1 Mac Arthur's P. C. 607.— Merrick, 1859. 23. "It is an undoubted truth that an in- ventor has no legal rights or immunities under a patent, except such as are conferred by the stat- ute. With whatever solemnity or observatioa of legal form it may have issued, if wanting in any substantial statutory requisite, it is a nullity. And such defect is always available as a defence ana suit for an infringement. " MoffittY. Gear et al., 1 Bond, 315.— Leavitt, 1860. 23. " Probably of all species of property, this property in patent rights should be most care- fully guarded and protected, because it is so easi- ly assailed. If a man invade my farm, the act is patent and open ; if he assails my person, it is an open act ; if he assails my personal or real property, it is an act easily capable of proof ; but the most diflBcult thing in the world is to prove an invasion of property of this character— prop- erty protected by patents. It is equally entitled to the protection of courts and juries with all other property of the citizen ; it should be most carefully protected from the difficulty of prov- ing the invasion." Singer et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 24. " Patents are not monopolies, . . . be- cause a monopoly is that which segregates that which was common before and gives it to one person or to a class for use or profit ; a patent is that which brings out from the realms of mind something that never existed before, and gives it to the country ; and when we consider the price- less blessings which have accrued to our land by the intellect and ingenuity of the country in this department, we feel almost lost in wonder at the vastness of the Interests which have been created by the ingenuity of the country and the immense amount now invested in this depart- ment of property." — lb. 25. " At common law an inventor has no ex- clusive right to his invention or discovery. That exclusive right is the creature of the statute, and to that we must look to see if the right claimed in a given case is within its terms." Morton v. N. Y. Eye Infirmary, 5 Blatch. 116. — SHtPMAir, 1862. 26. " Congress has wisely provided by law that inventors shall exclusively enjoy, for a lim- ited season, the fruits of their invention. To enable them thus to reap the benefits of their in- ventions, letters- patent are issued to them con- ferring upon them an exclusive grant, authoriz- ing them alone to manufacture, sell, or practice what they have invented. ' ' Clarh Patent Steamp & Fire Regulator Go. v. Copeland, 3 Fish. P. C. 321.— Shipman, 1863. 27. "A patent right ... is a right given to a man by law ; where he has a valid patent, he has a legal right, just as sacred as any right of property, and no more so." Bay den v. Suffolk Mfg Co., 4 Fish. P. C. 86.— Spragtjb, 1863. 28. " The object of every patent is to secure to the patentee, his heirs and assigns, the ex- clusive property in the invention set forth in the specification, free from all control or invasion by others. The patent is granted upon inquiry according to the forms of law, and assumes the patentee to be the original and first inventor, and therefore gives him the exclusive property in his invention for the benign and just object of rewarding him for his creative labors and in- genuity, and stimulating the inventive genius of others." Magic Ruffle Go. v. Douglas et al., 3 Fish. P. C. 380.— Shipman, 1863. 29. "Rights ... emanating from and exist- ing under a patent are as sacred and as well en- titled to protection as any other species of prop- erty." Potter et al. v. Muller, 3 Fish. P. C. 465.— Leavitt, 1864. 30. Patent " acts should be liberally construed to meet the wise and beneficent object of the legislature. Patentees are a meritorious class. " Commissioner of Patents v. WMteley, 4 Wallace, 533.— Sup. Ct. 1866. 31. " Patent rights are only granted upon the theory that the thing discovered, and for which the party asks for an exclusive right, is new as well as useful ; in other words, that it is the in- vention of the party who claims a patent for it, and was not known before his invention." Blanclwrd et al. v. Puttman et al. , 3 Bond, 85. — Leavitt, 1867. 33. "An inventor has no right to his inven- tion at common law. He has no right of prop- ISTATURB OF PATENT PRIVILEGE. 527 erty in it originally. The right which he has derived is a creature of statute and of grant, and is subject to certain conditions incorporated in the statutes and in the grants. " If to-day you should invent an art, a process, or machine, you have no right at com- mon lavr, nor any absolute natural right, to hold that for seven, ten, fourteen, or any given num- ber of years, against one who should invent it to-morrow, without any knowledge of your in- vention, and thus cut me and everybody else off from the right to do to-morrow what you have done to-day. There is no absolute right at com- mon law that I, being the original and first in- ventor of to-day, have to prevent you and every- body else from inventing and using to-morrow or next day the same thing." Am. H. & L. 8. & D. M. Co. V. Am. T. & M. Go. et al., 1 Holmes, 503!— Shbplbt, 1870. 33. " The patentee gets his right to the pat- ent not on the ground of any inherent natural right which he has, or right at common law, but because he is entitled to it by the terms of the statute of the United States which gives it to him, and, therefore, he has no rights except in compliance with " those terms and upon those conditions. ' ' — lb. 34. " Inventions secured by letters-patent are property in the holder of the patent, and as such are as much entitled to protection as any other property, consisting of a franchise, during the term for which the franchise or the exclusive right is granted. Letters-patent are not to be regarded as monopolies, created by the executive authority at the expense and to the prejudice of all the community except the persons therein named as patentees, but as public franchises granted to the inventors of new and useful im- provements for the purpose of securing to them, as such inventors, for the limited term therein mentioned, the exclusive right and liberty to make and use, and vend to others to be used, their own inventions, as tending to promote the progress of science and the useful arts, and as matter of compensation to the inventors for their labor, toil, and expense in making the inven- tions, and reducing the same to practice for the public benefit, as contemplated by the Constitu- tion and sanctioned by the laws of Congress." Seymour v. Osboi-ne, 11 Wall. 516. — Sup. Ct. 1870. 35. " The right claimed depends upon express statute, and exists only by its force and accord- ing to its terms." Siason et al. v. Gilbert et al., 9 Blatch. 185.— WooDmrPF, 1871. 36. " The property under a patent is just as much under the protection of the law as property in land. The owner has the same right to in- voke the protection of the court, and when he has made good his claim to the patent and shown an infringement of it, it is the duty of the courts to give him the same relief meted out to suitors in other cases." McComh v. M-nest, 1 Woods, 195.— Woods, 1871. ' 37. " Inventions lawfully secured by letters- patent are the property of the inventors, and th^ franchise and the patented product are as much entitled to legal protection as any other species of property, real or personal. They are, indeed, property even before they are patented, and con- tinue to be such, even without protection, until the inventor abandons the same to the public, unless he suffers the patented product to be in public use or on sale, with his consent and al- lowance, for more than two years before he files his application for patent." Jones etal. v. Bewail, 3 Clifford, 568.— Clifford, 1873. 38. " Whoever receives letters-patent from the United States receives thereby a prima facie right to maintain an action against every in- fringer." Celluloid M'fg Co. v. Goodyear Dental Vulcanite Co., 13 Blatch. 375. — Hunt, 1876. 39. " A patent for a useful invention is not, under the laws of the United States, a monopoly in the old sense of the law." Attorney- General V. Rumford Chemical Works et al. , 2 Baun. & Ard. S98.-SHEPLBT, 1876. 40. " So far as any inquiry may relate to the relations between the Government and the grantee of letters-patent of the United States, but little light can be reflected from the English decisions." — lb. 41. The patent systems of the United States and Great Britain rest upon different bases. — lb. 42. " Letters-patent for inventions in England are grants made by the crown de gratia speciale, the words ' of our special grace, ' in the patent, importing that the patent proceeds merely from the grace and bounty of the crown, the grantee having no right or title to the grant except through the favor of the crown. . . . Ih this country they are issued, neither in fact nor by implication, by any special grace or favor, and in no sense ex m^re motu, but as a matter of right, under the provisions of a, statute, to the inventor who has complied with the conditions which the statute imposes." — lb. 43. " Inventions secured by letters-patent are property in the holder of the patent, and as such are as much entitled to protection as any other property consisting of a franchise, during the term for which the franchise or exclusive right 528 NEW TEIAL. or privilege is granted." Brady v. Atlantic Works, 4 Cliff. 408.— Cliffokd, 1876. 44. " Inventions secured by letters-patent are property in tlie holder of the patent, and as such are as mucli entitled to protection as any other property consisting of a franchise, during the term for wliicU the franchise or the exclusive right is granted. Such a holder may sell, as- sign, lease, or give away the property, or enter into any arrangement or agreement respecting the same, not enlarging the right granted to the same extent as he might any other personal prop- erty." Star Salt Caster Co. et al. v. Crossman et al., 4 Cliff. 568.— Clippoed, 1878. 45. " The purchaser of a patented right is made a monopolist as to the article or commod- ity described in his letters-patent." Millnery. Schofieldetal, 4 Hughes, 258. — Hughes, 1881. 46. " As the product of his inventive faculty, the improvement is just as much the property of the inventor as his house or farm, and no man has the right to appropriate it any more than he has to take from him his house or farm. The laws of the United States on this subject are designed to encourage meritorious and use- ful inventions, and to protect their owners in the profitable enjoyment of them during the period fixed by the statute." May v. County of Fond du Lac, 27 Fed. Rep. 691.— Dteb, 1886. NEW TRIAL. This title embraces all modes of getting a re- hearing of a case, without reference to the stage of the case when the application therefor is made, aqd without reference to the technical name of the proceeding by which the rehearing is sougljt. Cases. 1. Neither matter of surprise, not objected to as it arises, nor mere cumulative evidence, nor the capability of making a better defense, are ground for new trial. Ames v. Howard et al., 1 Sumner, 482.— Stobt, 1833. 2. A verdict giving large damages where the amount is supported by some evidence, but con- tradicted and opposed by other evidence, cannot be set aside as opposed to the evidence. Stan- ley V. Whipple, 22 McLean, 35.— McLean, 1839. 3. That the damages are large, where no gross mistake is made, is not ground for setting aside the verdict of a jury. Alden et al. y. Dewey et al., 1 Story, 336.— Story, 1840. 4. He who seeks a reopening of a case upon the'ground of newly discovered evidence must, in order to be successful, show reasonable dili- gence in obtaining the newly discovered evi- dence. Washburn et al. v. Gould, 3 Story, 122. — Story, 1844. 5. " Although the evidence submitted to a jury may be conflicting, a new trial will not be allowed where there was evidence sustaining the finding of the jury. Brooks et al. v. Bick- nellet al., 4 McLean, 70. — McLean, 1845. 6. Motions for new trials " are not matters of right as to being granted, but the discretion of the court is to be exercised." Allen v. Blunt etal., 2 W. & M. 121.— Woodbury, 1846. 7. " It is well settled that a new trial should not be granted for a cause existing at the trial, but which was not stated or excepted to therein. " —lb. 8. " The verdict of a jury will not be set aside where there has been evidence on both sides, . . . and no misdirection as to the law." Blanchard Qunstock Factory v. Jacobs, 2 Blatch. 69.— Betts, 1847. 9. A new trial will not be granted' in any case unless the verdict is clearly without evidence or against the weight of evidence ; nor for the purpose of introducing new evidence to points before in controversy." — lb. 10. Although there may be some plausible ap- pearance that a verdict is against the weight of evidence, a new trial will not be allowed if it is not shown so clearly as to raise a strong pre- sumption that the jury either wantonly abused their powers or made some inadvertent mistake, Aiken v. Bemis, 3 W. & M. 348. — Woodbury, 1847. 11. In order to prevail in seeking for a new trial upon newly discovered evidence, the lim- itations are : first, the evidence must not have been known before the trial ; second, it must be material ; third, it must not be merely cumula- tive. And the party seeking the new trial must show due diligence.— J4. 12. " In these cases of new trials for newly discovered evidence, the terms are usually that the costs of the forhier trial be first paid." — lb. 13. A motion was made to open a judgment in the Supreme Court for the purpose of amend- ing a bill of exceptions, and rehearing the case upon the ground that material evidence offered by the plaintiffs in error, which might have in- fluenced the judgment of th6 court, had been omitted in the bill of exceptions contained in the record ; the court said that if any error had been committed in framing the exception it could be corrected by certiorari, but that no argument upon that exception or objection could be had. Gayler et al. v. Wilder, 10 Howard, 509.— Sup. Ct. 1850. NEW TEIAL. 529 14. "It must be a very extreme case . . . where a judgment below should be reversed on account of damages ... in an action ex delicto, and where the instructions suggested to the jury the true general rule and the leading ground of mitigation, as well as against excess, and when, if appearing to be clearly excessive under all circumstances, a new trial could have been moved and had on that account in the Circuit Court." Rogg et al. v. Emerson, 11 Howard, 587.— Sot. Ct. 1850. 15. New trial may be granted by the court on the ground that the verdict given by the jury was against evidence. Wilson v. JoTies et al., 3 Blatch. 227.— Betts, 1854. 16. "Motions to rehear in Chancery and for new trials at law are motions addressed to the discretion of the court, from the refusal to grant which there is no appeal." Bouse, W., In re, 1 MacArthur's P. C. 286.— Dunlop, 1854. 17. For an example of a new trial granted after a verdict for the complainant by a jury, see • — . CaiTv. Rice, 4 Blatch. 200.— Nelson, 1858. 18. A motion to amend an answer and set up new defence before testimony is taken should be granted, even though the hearing on the motion is not had until the testimony is completed, pro- vided the motion is otherwise properly supported. Moorehead v. Jones, 3 Wall. Jr. 306.— Grieb, 1860. 19. " When evidence is given on both sides, and the verdict of the jury is satisfactory to the court, the parties must not expect an extended argument from the court in disposing of the modon for a new trial. ' ' Bray v. Hartshorn, 1 Clifford, 538. — Clifford, 1860. 20. If a verdict of a jury gives excessive damages, the verdict will be set aside for that reason. Stafford v. Pawtucket Hair Cloth Co., 2 Clifford, 82.— Clifford, 1862. 21. Where a jury has clearly not followed the instructions of the court, a new trial will be granted. Johnson v. Root, 2 Clifford, 108. — Clifford, 1862. 22. Where a court instructs a jury to give nominal damages and they give substantial dam- ages, a new trial may be awarded. — lb. 23. " Irregularity on the part of the party charged, or of the jury, must be satisfactorily proved in order to lay the foundation for the in- terposition of the court ; but when the irregular conduct is established, it is not necessary that it should certainly appear that it influenced the jury. In that state of the case, it is sufficient that the irregularity appears to be of such a character that it might have affected the impar- tiality of the proceedings." — lb. 24. " Courts of the United States have power to grant new trials where there has been a trial by jury, for reasons for which new trials have usually been granted in courts of common law." —lb. 25. A grossly erroneous verdict of u, jury as to damages is proper basis for a new trial. Burdell et al. v. Denig et al., 2 Fish. P. C. 588. — SWATNE, 1865. 26. Where a verdict is set aside and a new trial is granted, the costs will abide the result. Densmore et al. v. Schofield et al., 4 Fish. P. G. 148.— SwATNB, 1868. 27. Defendants sought to have a perpetual in- junction dissolved, and the decree which had been made on final hearing opened ; defendants had paid the taxed costs awarded to the plain- tiff, and were held by this to have so affirmed the regularity and validity of the decree as to pre- vent them from having it opened. Doubleday V. Sherman et al., 6 Blatch. 513. — Blatchford, 1869. 28. Before the Supreme Court, a motion was made that the mandate of the court be stayed and that applicants have leave to file a bill of re- view ; it appeared that the alleged new evidence, of which the applicants desired to avail them- selves, had been accessible to them for seven years. The court held that their laches was fatal to the application, and said that it was a settled rule in this class of cases " that the mat- ter must not only be new, but such as the party, by the use of reasonable diligence, could not have known ; for if there be any laches or neg- ligence in this respect, that destroys the title to the relief. . . . Whether such an application be granted or refused rests in the sound discretion of the court. The requisite leave is not a mat- ter of right." Rubber Go. v. Goodyear, 9 Wall. 805.— Sup. Ct. 1869. 29. A search for new evidence, after decree made, with successful result, is evidence that the same result would have been reached by a search at the proper time ; and, with no ade- quate excuse for not making the search at the proper time, a new trial will be refused. India Rubber Comb Co. v. Phelps, 8 Blatch. 85.— Blatchford, 1870. 30. "As to disputed questions of fact upon conflicting evidence, the verdict of the jury should be taken as conclusive." Cowing v. Rumseyet al, 8 Blatch. 36.— Woodruff, 1870. 31. Where the court is of opinion that a charge to a jury was erroneous in a substantial point, plaintiff may avoid a new trial by remitting the damages. — lb. 32. Where a court is of opinion that a verdict 530 NEW TRIAL. gives too large damages, a new trial may be avoided by remission of the excess by the plain- tiff. Russell V. Place et al., 9 Blatch. 173.— Woodruff, 1871. 33. At a hearing, defendant attempted to use a prior patent in anticipation, without its having been set up in the answer, under a claim of verbal agreement between counsel, which was denied ; and thereupon the patent was not con- sidered after judgment for the complainant. Defendant moved for rehearing on that ac- count. Motion denied. Am. Saddle Co. v. Hogg, 1 Holmes, 177.— Shbplbt, 1872. 84. Where a case has once been tried by a court, " if a mistake had been made, it was the duty of the counsel to himself, his clients, and the court, to get the case reopened if possible." Baldwin v. Bernard et al., 5 Fish. P. C. 443. — Blatchford, 1872. 35. " The want of proper expert testimony is no ground for granting a rehearing. Applica- tion should have been made to the court prior to the first hearing, for opportunity to procure and put in such testimony." Hitchcock v. Tremain et al., 9 Blatch. 550. — Blatchford, 1872. 36. The discovery of a reissue, the original of which was used in a defence, is no ground for rehearing. — lb. 37. Rehearing upon alleged newly discovered evidence will not be allowed where the moving party does not show that he could not, with reasonable diligence, have obtained the evidence for the former hearing. — lb. 88. "It is a rule that counter-affidavits must be examined and considered by the court, ' ' on motion for leave to file a bill of review. Blandy et al. V. Griffith et al., 6 Fish. P. C. 434.— SWAYWE, 1873. 89. In an application for leave to file a supple- mental bill in the nature of a bill of review, " the application for leave must be made to file the bill as soon after the new evidence is discovered as can reasonably be done. ' ' — lb. 40. " Cumulative evidence as to a point al- ready at issue is an insufficient warrant to give leave" to file a bill of review. — lb. 41. In May or June, 1870, defendants had their attention called to alleged new testimony. Ap- plication to file a bill of review was filed Janu- ary 30th, 1873. It was held that a lack of dili- gence prevented allowance of the application. —lb. 43. " To permit parties to range over the country and hunt up witnesses after a case has been once fairly heard, and then make applica- tion for leave to file a new bill, is to render liti- gation expensive, and to involve the most seri- ous consequences to parties seeking justice. " — lb. 43. Bill of complaint for infringement of pat- ent was filed May 13th, 1873 ; answer was filed June 7th, 1873 ; replication was filed August 25th, 1873 ; complainants took proofs and rest- ed their case November 6th, 1873. November 36th, 1873, after full hearing of both parties, provisional injunction was granted. Afterward, on affidavits, defendants sought to have provi- sional injunction dissolved, the affidavits setting up two years' public use prior to application for patent, and also that complainants' patentee was not the original and first inventor. These de- fences had not been regularly made in the an- swer filed July 7th, 1873. Complainants con- tended that defendants could not, at this stage of the case, by affidavits, avail themselves of this defence, and the court sustained the contention. Union Paper Bag Macli. Co.etal.\. Newell etal., 11 Blatch. 549.— Blatchford, 1874. 44. After five years of litigation, in which no doubt as to infringement had been suggested by the defendants, and more than a year after de- cree defendants asked that the litigation be opened and their answer amended and a contest be had over the question of infringement, there- of the court said : " The indulgence here sought is not only without precedent, but beyond the power of the court, if that power is to be deemed governed by any rule whatever, in the existence of its judicial discretion." Buggies v. Eddy et al, 11 Blatch. 534.— Woodruff, 1874. 45. "It is true that the same weight is not given by courts to the verdict of a jury upon the validity of a patent which is justly given to the opinion of a jury upon other questions of fact. The subject-matter involved often requires a patient and quiet examination of different struc- tures, and an investigation of the modes of operation of machinery, for which the huijied and imperfect scriWiny which the jury can give during the trial of a case is sometimes inade- quate. ... It is equally true that the verdict of a jury is not to be set aside merely because the court might have arrived at a different conclu- sion. Unless the court can see that the jury was palpably mistaken, and that the weight of evi- dence is decidedly against their verdict, it should not be set aside. " Boberts v. Schuyler et at., 13 Blatch. 444.— Shipman, 1875. 46. A final decree may be modified or vacated by the court during the term at which it was entered. Beeves v. Keystone Co., 3 Bann. & Ard. 256.— McKennan, 1876. 47. " Until a decree is made from which an NEW TRIAL. 531 appeal will lie, it is the clear implication of the rule that the cause remains under control of the court, and that a rehearing may be granted at any time before final decree. ' ' — lb. 48. After a decree is made, application for re- liearing on the ground of newly discovered evi- dence must be by a petition to the court for leave to file a supplemental bill setting forth the newly discovered evidence, and for a rehearing of the case at the time when the supplemental bill may be ready for hearing. — lb. , 49. On application by defendant for a re- hearing, on the ground of newly, discovered evi- dence, "It is incumbent on the defendant to satisfy the court that the omission to produce the evidence, which it now seeks to make avail- able, before the former hearing of the cause, is not due to any negligence on its part, but that it made diligent efforts to discover and obtain it." Moreover, the newly discovered evidence must not be merely cumulative or corroborative of any of the original proofs, and must sustain a distinct and independent relation to the fun- damental question in the cause. — lb. 50. As regards an application for the reversal of a former decree and suspension of injunction, " tliere are two grounds only on which the court will grant a rule in such cases : [1] When the original decree shows upon its face that it is contrary to law ; [2] upon the allegation and prima facie proof of the existence of material facts which, if known, would have hindered the decree, and which the complainant in the bill of review did not know at the former trial, and could not have discovered by the exercise of reasonable diligence." Yerrington v. Putnam, 2 Bann. & Ard. 601.— Nixon, 1877. 51. Where a party has submitted to a decree pro confesso, under no mistake or apprehension of facts or neglect of counsel, he will be held thereto. Andrews et al. v. Denslow ei al., 14 Blatch. 183.— Bbnbdict, 1877. 53. Where A and B have been in interference in the Patent Office and A has prevailed, and A fourteen years afterward sues B for infringement and asks for a provisional injunction, it is then too late, and on such a motion, for B to reopen the question of priority of invention. Am. Shoe Tip Co. V. National Shoe Toe Protector Co., 2 Bann. & Ard. 551.— Nixon, 1877. 53. " Interlocutory orders and decrees are subject to revision until a final decree is made." Magic Ruffle Co. v. Blm City Co., 14 Blatch. 109.— Shipman, 1877. 54. After an interlocutory decree had been en- tered, defendants petitioned for the same to be opened because of the discovery of new matter and tlie failure of their counsel to fully repre- sent their interests. It appeared that the facts had been fully known to the defendants and their counsel. The court held that not only was the question at issue foreclosed by the said in- terlocutory decree, but also by a judgment the same way in an action at law, on the law side of the court, between the same parties. Ingersoll V. Benhamet al., 3 Bann. & Ard. 179. — Whebl- ER, 1877. 55. In an attempt to secure a rehearing and new trial it would be unsafe and unjust, not only to the complainant but also to the solicitor, to assume that the solicitor had not done his full duty, without proof to that effect. —lb. 56. "It is not understood that, after a full hearing, and especially after decision thereupon, the parties to a cause have any right to have it reargued by either the same or diiferent coun- sel." Beady Roofing Co. et al. v. Taylor et al., 15 Blatch. 94.— Wheelek, 1878. 57. "A motion for a new trial, for the intro- duction of new evidence, must be governed by the same rules that such motions are. These rules require that the evidence be newly discov- ered in fact ; that by the exercise of ordinary dili- gence it could not be discovered so tjiat it could be introduced at the former trial, and that it should be of such materiality and weight that it would probably change the result. And, upon such questions, the knowledge and diligence of counsel must be considered the same as those of the party." — lb. 58. " There is no universal nor absolute rule which prohibits the courts from allowing the introduction of newly discovered evidence under a hill of review to prove facts which were in is- sue on the former hearing. But the allowance of it is not a matter of right in the party, hut of sound discretion in the court, to be exercised cautiously and sparingly, and only under cir- ' cumstances which demonstrate it to be indis- pensable to the merits and justice of the cause. ' ' Craig v. Smith, 100 U. 8. 336.— Sup. Ct. 1879. 59. A brought suit against B for infringement of patent, and B entered ' into a written agree- ment under seal with A, wherein B admitted the validity of complainant's patent and his exclu- sive right, agreed upon the amount of damages, and consented to a decree upholding the patent, awarding the damages and also a perpetual in- junction. Many terms of the court having elapsed, B petitioned for leave to file a supple- mental bill for the purpose of having the former decree set aside. Thereof the court said : " In the first place, the application is in substance for leave to file a bill of review. It is therefore j32 NEW TEIAL. governed by Equity Rule 88, and comes too late. • In the second place, the bill of review for setting aside a decree, entered by consent, with- out fraud, will not be entertained. In the third place, so long as the agreement made between the parties prior to the entry of the decree stands, its admissions must operate by way of estoppel." Pentlarge & Beeston, in re, 17 Blatch. 306.— Benedict, 1879. 60. Defendants asked leave to file a bill of teview, the real gravamen of the application being alleged laches, inexperience and incompe- tency of counsel. The court denied the appli- cation, saying : " If such grounds were to be admitted as reasons for opening cases, there would never be an end of a suit, so long as new counsel could be employed who could allege and show that prior counsel had not been sufiBciently diligent, or experienced, or learned. " De Florez et al. V. Raynolds et al., 16 Blatoh. 397.— Blatchpokd, 1879. 61. "It is well settled that, in the case of an application, on the ground of newly discovered | evidence, to vacate the decree in an equity suit ■ on a patent, and allow the answer to be amend- 1 ed and the case retried, the application can be granted only ' for the gravest reasons and the plainest proof of the siafficiency of the newly offered evidence to lead the court to a different result.' " — /*. 63. " Defendants ought not to be heard to allege matter claimed to have been then existing, which they . . . neglected to present to the court, and have the benefit of it now to dissolve an injunction properly granted." National ScJwol Jfurniture Co. v. Baton etal., IG Blatch. 563.— Blatchpord, 1879. 63. "Rule 88 in equity provides that "No rehearing shall be granted after the term at which the final decree of the court shall have been entered and recorded, if an appeal lies to the Supreme Court. " Barker v. Stowe, 4 Bann. & Ard. 485.— Blatchfobd, 1879. 64. Where it does not appear aflSrmatively that the alleged newly discovered testimony could not have been produced before, it will not avail to procure a new trial. — lb. 65. A proposed amendment to an answer, set- ting up a new defence, after the case has gone to a master, is to be denied. Evory et al. v. Candee et al., 5 Bann. & Ard. 67.— Shipman, 1880. 66. " The English practice of granting a re- hearing upon the certificate of two counsel, as a matter of course, does not prevail in the fed- eral courts of this country. According to the present practice in this court, the granting of auch motion rests In the sound discretion of the judges who have heard the cause or made the decision. This seems to be the general practice in the circuit courts of the United States. ' ' Am. Diamond Back Boring Co. v. Sheldon et al., 18 Blatch. 50.— Wheblbk, 1880. 67. The solicitor of the defendant, a corpora- tion, made oath that " the defendant had used, as it supposed, all due diligence to obtain all im- portant evidence of ' past inventions,' " etc. Held insuflacient to evidence due diligence on petition for rehearing. Page et al. v. Holmes B. A. T. Co., 18 Blatch. 118.— Blatchpord, 1880. 68. By the cpurt : " The affidavit in support of the motion sets forth no particular facts con- stituting defences desired to be brought forward, and no reason why they have not been brought forward in the usual manner, if they exist, ex- cept that the case was not attended to either by the defendants or their solicitors. Such an affidavit is wholly insufficient for the purpose." Day V. Schwab et al., 3 Fed. Rep. 544. — Wheelbb, 1880. 69. By the court : "I do not think it can be proper to grant an application like the present, addressed to the favor of the court and strongly opposed, when the result will be to compel the complainant, after he has brought his case to a final hearing and it has been submitted by both sides for decision, again to renew the contest upon additional testimony, and in substance with another party, in order that detriment to the interests of such third party, which it is an- ticipated may follow a decision in favor of the plaintiff, may be avoided. " Schneider v. Thill, 18 Blatch. 341.— Benedict, 1880. 70. After entry of final decree in a court of original jurisdiction, a petition for rehearing cannot be considered ex parte. Oiant Powder Co. V. Cal. Yigorit Powder Co. et al., 5 Fed. Rep. 197.— Field, 1880. 71. " The general power of the court over its own judgments, orders, and decrees in civil and crimiuEil cases, during the existence of the term at which they are first made, is undeniable.'' " The power to vary a final judgment or order, at least in a case where there was jurisdiction to make it, does not exist after the term at which it was made." Fisclier v. Hayes, 19 Blatch. 13. — Blatchfobd, 1881. 73. A motion for rehearing cannot be granted in the absence of adequate excuse for not pre- senting the alleged defences within the time pre- scribed by the law and rules. Brown v. Deere et al., 3 McCrary, 435.— Treat, 1881. 73. Defendant, being under decree for injunc- tion and account, made motion to reopen the case and admit newly discovered defence, the NEW TEIAL. 633 same being an English patent. The court did not think the patent would have changed the judgment, if it had originally been in the case, and refused the motion for that reason. Adair V. Thayer, 7 Fed. Rep. 920.— Wheeler, 1881. 74. The patent in suit was granted to Jordan and Smith as joint inventors. After a decree by court that defendants had infringed, defendants moved to reopen the case on the ground that ^ Jordan was the sole inventor. Jordan so made afBdavit — Smith being dead — and shopmates made affidavit that Jordan originally spoke of himself as the sole inventor, and that Smith made no such pretension. Jordan swore, in ob- taining the patent, that both were joint inventors ; the patent had been sold to complainant many years before. Held, that the evidence did not warrant the grant of the motion. Collins Co. v. Coes et al., 8 Fed. Rep. 517.— Lowell, 1881. 75. "Where defendants sought to have their answer amended, to let in a new patent, but they did not show its materiality, or why it could not have been set up before, the application was denied. Richardson v. Croft et al., 30 O. G. 373.— Blatchpokd, 1881. 76. After making a decretal order dismissing a bill of complaint, and before signing the de- cree, a motion to reoiaen the case for new evi- dence [as to novelty and utility] was made. The court said : " It is plain that the motion should not be granted unless the new evidence would vary the case and probably lead to a, different result." McClosJcey v. Du Bois, 30 Blatch. 7. — "Wheeler, 1881. 77. "After parties have had a full opportunity to ascertain, take, and present all their proofs, and they have been taken, presented, consid- ered, and their weight determined, there is no just ground for opening the case to afford op- portunity to explore for further proofs. In ap- plications for a new trial on newly discovered evidence the evidence offered should of itself be such as to make it probable that its intro- duction would change the result. The authori- ties are full to this extent at least." Mwison V. New York, 20 Blatch. 358.— Wheeler, 1882. 78. By the court : " It is never too late at any time during the pendency of the proceeding for the court to examine into its right and power to make a decree or enter a judgment in a case. ' ' Kor need the objection be raised in the plead- ings. Spring et al. v. Domestic Sewing Mach. Co., 13 Fed. Rep. 446.— Nixon, 1882. 79. "A rehearing will be denied if the non- product of the evidence is attributable to the ; laches of the party or his counsel." Colgate \. W. U. Telegraph Co., 2ZBla.tch. 118.— Blatch- PORD, 1884. 80. Where defendant waits three years after the discovery of new evidence before making ap- plication for a rehearing, and meanwhile a per- petual injunction has been ordered against the defendant, and the defendant has recognized the complainant's rights by compromising for past use, and taking a license for the future use of the invention, and for a considerable period has been enjoying the use of the invention under a license, a rehearing will not be allowed. " The law of laches, as applied to motions for new trials or rehearings, is founded on a statutory policy. It is for the interest of the public as well as of the litigants that there should be an end of litigation, and that efforts to reopen' controversies, after they have had a full oppor- tunity to be heard and a careful hearing and con- sideration, should be discouraged " — lb. 81. By the court : " We do not say that cir, cumstances may not arise which would justify the court in opening a final decree, allowing new defences to be added, new proofs to be taken out, and another hearing to be had. But such a course is unusual, and, if easily obtained, it would render a final decree in equity of little practical value. Courts do not look upon ap- plications of this kind with favor. " LocTcwood V. Cleveland et al., 30 Fed. Rep. 164.— NrxoN, 1884. 83. " Amendments of pleadings, which intro- duce a new defence, are permitted with great reluctance in equity after a cause has been set for hearing ; and, after a hearing, are rarely al- lowed. . When the application is based upon the ground of newly discovered evidence, a more liberal rule obtains, but courts of equity, as well as courts of law, in such cases proceed with great caution, and extend no indulgence to the negli- gent. "Unless it appears affirmatively that the evidence could not have been obtained in due season, if the party applying had used all rea- sonable efforts in that behalf, the application will be denied. It is due to the public interests, as well as to the immediate litigants, that rehear- ings for the purpose of letting in evidence which might have been and ought to have been intro- duced before the hearing should not be toler- ated. In no class of cases should the practice of allowing rehearings be more strictly guarded than in cases . . . where the defence of prior use is relied on to defeat the novelty of a pat- ented invention ; because it is seldom that a de- fendant cannot make it appear that he has dis-. covered additional evidence in support of such a 534 NEW TEIAL. defence." Hicks y. Otto et al., 23 Blatcli. 133. —Wallace, 1884. 83. In an application for a new trial or rehear- ing upon other evidence than that before the court, in the case, the applicant, in order to pre- vail, must show that he has not been guilty of laches in obtaining the new evidence and bring- ing it into court. Lockwood v. Cleveland et al. , 30 I*ed. Rep. 164.— Kixon, 1884. 84. " Interlocutory decrees remain under the control of the court and subject to its revision until the master's report comes in and is finally acted upon by the court, and the whole of the matters in controversy are disposed of by a final decree." Wooster v. Handy, 23 Blatch. 307.— Blatchpord, 1884. 85. A petition for a rehearing or new trial must show " that the petitioner could not with reasonable diligence have obtained, prior to the former hearing, the testimony which he now seeks to adduce. " Spill y. Celluloid M'fg Co., 22 Blatch. 441.— Blatchpokd, 1884. 86. A suit was brought for the infringement of two patents. At the hearing the complain- ant withdrew one of the patents from the con- sideration of the court. After decision, defend- ant sought for a rehearing on the ground that def endstnt had supposed that the withdrawn pat- ent was the one mainly relied upon, and that important matters concerning the other patent had failed to come to the attention of the court. The court held the reasons insufficient. Everest V. Buffalo Lviricating Oil Co., 32 Blatch. 524. — CoxB, 1884. 87. " New evidence, discovered after the hear- ing before the master is closed, may, in proper cases, be a ground for a bill of review, on which issue may be joined and evidence adduced by both parties in the usual way. The defendants are not concluded by the refusal of the court, on mere aflBdavits, to refer the cause back to the master." Thompson et al. v. TFbosto', 114 U. S. 104. -Sdp. Ct. 1885. 88. He who seeks to have a case reopened for further testimony must, as a rule, show that the testimony in question could have been offered at the former trial of the case. U. S. v. Gun- ning et al., 23 Fed. Rep. 668.— Wheeler, 1885. 89. Where it is sought to reopen a case for further testimony, it is proper for the court to inquire into the case far enough to see whether the new testimony will materially change the former conclusion, and to deny the motion if not. — lb. 90. Where a party seeks a rehearing on the ground of new evidence which is procurable, it is not material to show that the party did not know of and could not by reasonable diligence have found the new evidence, so as to put it into the original case. Bailway Register M'fg Co. V. Broadway & Seventh Ave. Bailway Co., 33 O. G. 257.— Wheeler, 1885. 91. Certain causes were pending for the pur- poses of an accounting before a master pursuant to an interlocutory decree made upon hearing in chief. A motion was made for a rehearing on the merits. The motion was granted upon the condition and order that, in case there should afterward be a decree in the case for an account- ing, the testimony already taken before the mas- ter should stand for use before the same or any other'master in the case, as if taken by the parties respectively upon such accounting. Am. Dia- mond Bock Boring Co. v. Sheldons et al., 33 Blatch. 286.— Wheeler, 1885. 92. Where a decree is interlocutory and not final, the court has power to open the same and allow a new defence on motion and without the formality of a bill of review. But where the ,np- plication is in fact and substance for a rehearing on the ground of newly discovered evidence, it must be supported by the same sort of proof as the court requires in order to give a party relief upon a bill of review, or a supplemental bill in the nature of a bill of review, after a final hear- ing. WilUmardic Linen Co. et al. v. Clark Thread Co. et al., 33 O. G. 1356.— Nixon, 1885. 93. Where more than twelve years have ■ elapsed since the bill of complaint was filed, and an acknowledged error in the evidence of cer- tain date is committed, and it does not clearly appear that the defendants could not, xith rea- sonable diligence, have discovered the facts which are sought to be introduced, there is too great laches to permit of the reopening of the case. — lb. 94. In order to procure the reopening of a case on the ground of newly discovered evidence, it must be shown that there was no laches in pro- curing the evidence, and that the new proofs sought to be introduced are material. Hoe et al. V. Kahler, 23 Blatch. 354. — Blatchpord, 1885. 95. After litigations about the same subject- matter had been going on five years, defendant desired a rehearing on the ground of newly dis- covered evidence. It not appearing to be newly discovered, the motion for rehearing was denied. Albany Steam, TVap Co. v. Felthousen, 36 Fed. Rep. 318.— CoxE, 1886. 96. "A reargument is never granted to allow a rehash of old arguments, and . . . the proper remedy for errors of the court on points argued in the first hearing is to be sought by appeal, when the decree is one which can be reviewed OATH. 535 by an appellate tribunal." Railway Register M'fg Co. V. North Hudson County Railroad Co. etal., 26 Fed. Rep. 411.— Nixon, 1886. 97. " The grounds on which courts ordinarily listen to such applications are . . . [1] upon al- legations that any question decisive of the case and duly submitted by counsel has been over- looked by the court ; or [2] that the decision is in conflict with an express statute, or with a con- trolling decision either overlooked by the court or to which attention was not drawn through the neglect or inadvertence of counsel." — lb. 98. It is not a sufficient ground for reargu- ment tliat a party did not present his defence as fully and ably as It might have been done. — lb. 99. In an action on the case, after the evi- dence ^•/as in, the judge instructed the jury to return a verdict for the defendants, which was done, the defence being that the patent had been anticipated. The Supreme Court held this action to be erroneous, saying that there were obvious differences between the prior device and that of the patent ; that in such a case It was not a mat- ter of law, that they were identical, and that the question should have been submitted to the jury, wherefore a new trial as ordered. Keyes et al. V. Grant et al., 118 U. S. 25.— Sup. Ct. 1886. 100. " It would tend to great confusion and uncertainty in the administration of the law if a conclusion, reached after mature deliberation, should," while thesituation remained vmchanged, " be set aside and reversed by the same tribunal that rendered it." Qage v. Kellogg et al., 36 0. G. 234.— CoxB, 1886. 101. " If the newly discovered evidence which is submitted would not change the result of the verdict and judgment, it is well settled that new trial should not be granted." Starling v. St. Paul Plough Works, 32 Fed. Rep. 290.— Nelson, 1887. 102. An unincorporated association of persons was sued as the " Cunard Steamship Company, " incorporated. They made answer to the bill under that designation, and the decree went against them. It was held that it was then too late to open the decree on the ground of misde- scription, etc. Bate Refrigerating Co. v. Oillett et al., 31 Fed. Rep. 809.— Bradley, 1887. 103. By the court : " It would be doing vio- lence to the rightful and decorous courses of judicial practice if, upon the pretext of a re- hearing had for the purpose of considering the effect of newly discovered evidence, which it is found cannot disturb the decree, we should pro- ceed to overhaul the decree hitherto declared by the superior authority, however widely we might differ, if the matter were fairly open to us." Reed et al. v. Lawrence et al., 32 Fed. Rep. 228. — Sevbebns, 1887. 104. A misquotation by the court in its opin- ion of testimony, when the matter is not mate- rial, is not a basis for a rehearing and reargu- ment. — lb. 105. Where, on a motion for a new trial, the evidence offered by the defendant is met by the evidence offered by the complainants, new trial will be refused. Pfanschmidt etal. v. Kelly Mer- cantile Co., 32 Fed. Rep. 667.— Nelson, 1887. OATH. "Oath" in the Patent Office. Act approved February 21st, 1793. Section 3. And be it further enacted, That every inventor, before he can receive a patent, shall swear or affirm that he does verily believe tliat he is the true inventor or discoverer of the art, machine, or improvement for which he so- licits a patent, which oath or affirmation may be made before any person authorized to administer oaths. [Repealed July 4th, 1836.] Act approved April 17th, 1800. Sec. 1. Be it enacted, etc., . . . Every per- son petitioning for a patent for any invention, art, or discovery, pursuant to tliis act, shall make oath or affirmation before some person duly authorized to administer oaths before such patent shall be granted, that sucli invention, art, or discovery hatli not, to the best of his or her knowledge or belief, been known or used either in this or any foreign country, and that every patent which shall be obtained pursuant to this act, for any invention, art, or discovery which it shall afterward appear had been known or used previous to such application for a patent, shall be utterly void. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 6. And be it further enacted, . . . The applicant shall also make oath or affirmation that he does verily believe that he is the original and first inventor or discoverer of the art, ma- chine, composition, or improvement for which he solicits a patent, and that he does not know or believe that the same was ever before known or used ; and also of what country he is a citi- zen ; which oath or affirmation maybe made be- fore any person authorized by law to administer oaths. [Repealed July 8th, 1870.] Act approved March 3d, 1837. Sec. 13. Ajid be it further enacted, That in all cases in which an oath is required by this act, or by the act to which this is additional, if the person of whom it is required shall be conscien- 536 OATH. tlously scrupulous of taking an oath, afBrmation may be substituted therefor. [Eepealed July 8th, 1870.] Act aiDproved August 39th, 1843. Sec. 4. And be it farther enacted, That the oath required for applicants for patents may be taken, when tlie applicant is not, for the time being, residing in the United States, before any minister, plenipotentiary, cJiarge d'affaires, con- sul, or commercial agent holding commission under the Government of the United States, or before any notary public of the foreign country in which such applicant may be. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 30. And be it further enacted, That the applicant shall make oath or affirmation that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, manufacture, composition, or improvement for which he solicits a patent ; that he does not know, and does not believe that the same was ever before known or used ; and shall state of what country he is a citizen. And said oath or affirmation may be made before any person with- in the United States authorized by law to admin- ister oaths, or, when the applicant resides in a foreign country, before any minister, charge d'affaires, consul, or commercial agent, holding commission under the Government of the United States, or before any notary public of the foreign country in which the applicant may be. Sec. 34. Provides for issue of patent to exec- utor or administrator, and proceeds : " The oath or affirmation required to be made shall be so varied in form that it can be made by them." [Repealed June 33d, 1874.] Act approved June 33d, 1874. Sbc. 4893. The applicant shall make oath that he does verily believe himself to be the original and first inventor or discoverer of the art, ma- chine, manufacture, composition, or improve- ment for which he solicits a patent ; that he does not know, and does not believe that the same was ever before known or used ; and shall state of what country he is a citizen. Such oath may be made ^before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any minister, charge d'affaires, consul, or, commercial agent holding commission under the Government of the United States, or before any notary public of the foreign country in which the applicant may be. Sec. 4896. Provides for issue of patent to exec- utor or administrator, and proceeds : " And when the application is made by such legal rep- resentatives, the oath or affirmation required to be made shall be so varied in form that it can be made by them." CIasbs. 1.' The omission of the oath of invention, or of the payment of Government fees in making application for patent— as directed by statute — does not invalidate the patent. Whittemore v. Cutter, 1 Gall. 439.— Stoet, 1813. 3. The patentee's oath of invention counter- balances the oath of a single witness that he communicated the invention to the patentee. Alden et al. v. Dewey et at. , 1 Story, 336. — Stob Y, 1840'. , 3. Whether an oath in an application for pat- ent be or be not sufficient is not material on the question of the validity of the patent. Dyer v. Rich, 1 Metcalf, Mass. 180.— Shaw, 1840. 4. " Under Section 7 of the act of 1836, . . . tlie oath anew is to be taken only when the ap- plicant persists in his application, after having been informed by the Commissioner of the errors or defects of his specification. If this happens before his claim is rejected, no new oath is nec- essary to enable him to appeal." Crocker, M.A., in re, 1 MacArthur's P. C. 134. — Cranch, 1850. 5. " There is no act which requires the jurat to be dated at all. " French et al. v. Rogers et al., 1 Fish. P. C. 133.— feANE, 1851. 6. " The oath of the party is to be considered in the character of prima facie evidence of the novelty of the invention." Wagner, J. Z. A., in re, 1 MacArthur's P. C. 510. — Moksbll, 1857. 7. The oath, in an application for reissue, did not aver that the original patent was ' ' inopera- tive or invalid," but did aver tliat it is " not fully valid or available." The reissue was held void for this reason. Wliitely v. Swayne, 4 Fish. P. C. 117.— Leavitt, 1865. 8. Where, in an application for a patent, a substitute specification is filed, varying from the original substantially, it must be verified by sup- plemental oath or the patent is not valid. — lb. 9. Where a notary public signs his name to an oath as a notary public, and affixes his official seal, his office is sufficiently evidenced under the act of Congress of September 16th, 1S60, para- graph 1. Goodyear et al. v. Hullihen et al., 2 Hughes, 493.— Jackson, 1867. 10. The application for the patent in suit did not show an oath, but did show a blank form therefor unexecuted. Evidence held insufficient to prove that the oath was not made. Orompton V. Belknap Mills et al., 3 Fish. P. C. 536. — Clahk, 1869. PARTIES. 537 11. " The taking of the oath, though to be done prior to the granting of the patent, is not a condition precedent, failing which the patent must fail." — lb. 13. Where letters-patent recite that the re- quired oatli was taken before the same were granted, such recitals, in the absence of fraud, are conclusive evidence that such oath was taken. Seymour v. Osborne, 11 Wall. 516.— Sup. Ct. 1870. 13. The law does not leave the validity of a patent open to be inquired into by the courts upon the ground that no oath was made in the application. Be Florez et at. v. Maynolds et al., 14 Blatch. 505.— Wheeler, 1878. 14. Marinoni and Chandre had jointly taken French, Belgian, and British patents on the in- vention in question. Marinoni, making the usual oath of sole invention, took a sole United States patent for the same invention. On the trial Chandre testified that he was a joint and equal inventor of the improvement. Held in- sufficient to overcome Marinoni's said oath, and the United States patent sustained. Hoe et al. V. Cottrell et al , 17 Blatch. 546. — Shipman, 1880. 15. A certified copy of the file wrapper and contents appurtenant to an application for pat- ent, showing, a defective oath, does not alone prove that a proper oath was not made at some other time. Hoe et al. v. Kahler, 20 Blatch. 430. — Blatchfosd, 1882. 16. By the court: " A petition and affidavit were filed, upon which the reissued patent sued on herein was predicated. But the affidavit does not affirm that the original or first reissue was either inoperative or invalid, but in lieu of this statutory requirement, the affidavit alleges that the same was not ' fully valid and avail- able. ' The language thus employed is not the equivalent of that prescribed by the statute ; it is an evasion declared by this court in Whitney V. Swayne, 4 Pish. 117, to be insufficient to sup- port a reissued patent." Poage v. McQowan et al., 15 Fed. Rep. 398.— Baxtbb, 1883. 17. The statute requiring an oath by an appli- cant for an original patent is directory merely ; and if the oath be irregular, or omitted alto- gether, the patent is not thereby vitiated. I-Iarts- Ihorn V. Ba^le Shade Roller Co. et al., 18 Fed. Rep. 90.— Lowell, 1883. 18. With respect to reissues, the argument that irregularity or omission of oath does not invali- date the patent " is stronger, because there is no law which requires the applicant for a reissue to take any oath at all on the subject of the invalid- ity of his original patent." — lb. 19. The existence, in an application filed for a patent, of an oath made by the applicant's at- torney, when the statute requires the inventor to make oath, is not evidence that the inventor never properly made the oath required by stat- ute. Furthermore, in an action for infringement of the patent granted on such application, the sufficiency of the oath cannot be inquired into collaterally. A recital in a patent that the re- quired oath was properly taken is conclusive evi- dence of the taking of the oatli. Hancock In- spirator Go. V. Jenks, 21 Fed. Rep. 911.— Brown, 1884. 30. " Showing what were the contents of the file wrapper" at a former date, " or what are its contents now, or what was the practice of the Patent Office in regard to preserving papers filed in applications for patents, and letters to and from the office, and in regard to the record of the proceedings and filing of papers, and of receiving and sending communications, and the scope and functions of a file wrapper and con- tents, is not sufficient to rebut the presumption that the Commissioner required and received a proper preliminai-y oath. . . . The affirmative probative force of a paper in a file wrapper, to show the existence of its contents, is one thing, but its negative probative force, to show that a paper or a fact not shown by anything in its contents did not exist, is quite a different thing. The fact that papers known to have existed, and which properly belonged in a file wrapper, are missing therefrom is a fact of such frequent occurrence in patent suits as to have become a matter of judicial cognizance. " Hoe et al. v. Kahler, 33 Blatch. 354.— Blatchfobd, 1885. PARTIES. "Parties" in the Patent Acts. Act approved April 10th, 1790. Section 4. And be it further enacted. That if any person or persons shall devise, make, construct, use, employ, or vend, within these United States, any art, manufacture, engine, machine, or device, or any invention or improve- ment upon or in any art, manufacture, engine, machine, or device, the sole and exclusive right of which shall be so as aforesaid granted by patent to any person or persons, by virtue and in pursuance of this act, without the consent of the patentee or patentees, their executors, ad- ministrators, or assigns, first had and obtained in writing, every person so offending shall for- feit and pay to the patentee or patentees, his, her, or their executors, administrators, or as- 538 PARTIES. signs, such damages as shall be assessed by a jury, and faoreover shall forfeit to the person aggrieved the thing or things so devised, made, or constructed, used, employed, or vended, con- trary to the true intent of this act, which may be recovered in an action on the case founded on this act. Sec. 6. Provides for actions for infringement "to be brought by such patentee or patentees, his, her, or their executors, administrators, or assigns." [Repealed February 31st, 1793.] Act approved February 31st, 1793. Sec. 5. Arid be it further eriacted, That if any person shall make, devise, and use, or sell the thing so invented, the exclusive right of ■which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators, or as- signs, first obtained in writing, every person so offending shall forfeit and pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or licensed, to other persons, the use of the said invention, which may be recovered in an action on the case founded on this act, in the Circuit Court of the United States, or any other court having competent jurisdiction. [Repealed July 4th, 1836.] Act approved April 17th, 1800. Sec. 3. And be it farther enacted. That where any patent shall be or shall have been granted pursuant to this or the above-mentioned act, and any person, without the consent of the patentee, his, or her executors, administrators, or assigns, first obtained in writing, shall make, devise, use, or sell the thing whereof the exclu- sive right is secured to the said patentee by such patent, such person so offending shall forfeit and pay to the said patentee, his executors, ad- ministrators, or assigns, a sum equal to three times the actual damage sustained by such pat- entee, his executors, administrators, or assigns, from or by reason of such offence, which sum shall and may be recovered, by action on the case founded on this and the above-mentioned act, in the Circuit Court of the United States, having ju- risdiction thereon. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 14. Provides for actions to recover dam- ages for infringement "to be brought in the name or names of the person or persons interested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States." [Repealed July 8th, 1870.] Act approved July 8th, 1870. , Sec. 59. Provides for recovery of damages for infringement, by action on the case, "in the name of the party interested, either as patentee, assignee, or grantee. " Sec. 60. Provides for filing disclaimers, and proceeds : " Every such patentee, his executors, administrators, and assigns, whether of the whole or any substantial interest in the patent, may maintain a suit at law or in equity for the infringement of any part thereof," etc. [Re- pealed June 32d, 1874.] Act approved June 32d, 1874. " Sec. 4919. Damages for the infringement of any patent may be recovered by action on the case, in the nature of the party interested, either as patentee, assignee, or grantee. . ." Sec. 4923. Provides for filing disclaimers, and proceeds : " Every such patentee, his executors, administrators, and assigns, whether of the whole or any sectional interest in the patent, may maintain a suit at law or in equity for the infringement of any part thereof," etc. Cases. 1. Infringement of patent is a tort. Torts are several as well as joint. In a suit against two persons, recovery may be had against one only. Seutgen v. Kanowra et al., 1 Wash. 168. — Wash. 1804. 2. Owners of less than the whole patent can- not, under the statute, maintain an action for infringement. Tyler et al. v. Tuel, 6 Cranch, 824.— Sup. Ct. 1810. 3. An agreement to assign, no assignment having been made, does not prevent the owner, who has thus agreed, from maintaining an action for infringement in his own name. Park v. Lit- tle et al., 3 Wash. 196.— Wash. 1813. 4. Action for infringement can be maintained jointly by the patentee and assignee of a part interest, they together holding the whole title ; also by joint patentees ; also by one of joint pat- entees and the administrator of the other, Witit- temore v. Cutter, 1 Gall. 429.— Story, 1813. 5. Action for infringement will lie against a corporation. Kneasa v. Schuylkill Bank, 4 Wash. 9.— Wash. 1830. 6. After assignment, the assignee must sue in his own name. Herbert v. Adams, 4 Mason, 15. — Stokt, 1825. 7. The assignee of a territorial right " may support a suit in equity to enjoin third persons from infringing the patent, ' ' and for an account. Ogle et al. y. Ege, 4 Wash. 584.— Wash. 1826. 8. Under the patent act of 1793, chapter 55, Section 4, an assignment must be recorded be- fore the assignee can bring suit. Wyeth et al. V. Stone etal., 1 Story, 273.— Stoky, 1840. PAETIES. 539 9. For an example of a conveyance under a patent, seemingly a license, which was held to give the licensees the power to bring suit for in- fringement in their own right, see — . Wash- burn et al. V. Gould, 3 Story, 133. — Stoet, 1844. 10. " There are strong reasons why the inter- est of the principal should, by an action at law, and also by a bill in Chancery, be reached through his agent." Boyd v. McAlpin, 3 Mc- Lean, 437.— McLean, 1844. 11. Foundry men who cast an infringing arti- cle, as employes of another party, may be held as infringers. Bryce v. Dorr et al. , 3 McLean, 583.— McLbau, 1845. 13. An assignee of an exclusive right to use a certain part of a machine within a certain town has such a right as will enable him to maintain an action for infringement of the patent within that town. Wilson v. Bosseau et al. , 4 Howard, 646.— Sup. Ct. 1846. 13. It is doubtful whether a misjoinder of parties as plaintiffs can defeat a prayer for an injunction against a use of a patented machine. Woodworth et al. v. Sail et al, 1 W. & M. 348. — WOODBUKY, 1846. 14. A licensee as to a particular district, under a patent, may be properly joined with the owner of the patent in bringing suit for infringement occurring within said district. Woodworth v. Wilson, 4 Howard, 713.— Sup. Ct. 1846. 15. He who is selling the patented articles without right, as the agent of another, may be enjoined. Buck v. Cdbh et al., 9 Law Bep. [0. S.] 545.— CoNKLiNG, 1846. 16. In bringing suit for infringement of pat- ent in a certain district it is an immaterial fact that the person who is an owner of the patent outside of that district is joined as complainant. —Ih. 17. A license to use a patent in the manufac- ture of a particular kind of goods does not give an interest on which suit may be maintain- ed. Suydam v. Day, 2 Blatch. 30.— Nelson, 1846. 18. A petition for leave to file a supplemental bill, bringing in a new party, is sufficiently de- nied by charging that such other party has be- come connected with the subject-matter of the suit since the original bill was filed, and is in that connection doing acts which the court has by injunction restrained the original party from doing ; and that is, in substance, sufficient to authorize the plaintiff to bring suit against the new party. Parkhurst v. Kinsrrian et al., 3 Blatch. 73.— Bbtts, 1848. 19. A corporation may hold a patent and re- issue the same in its own name. Blanehard Qunstock Turning Factory v. Warner, 1 Blatch. 358.— ZSTblson, 1848. 30. Blanehard brought suit in his own name, at law, for damages for infringement of a patent he had obtained for turning every kind of ir- regular forms. He had conveyed to one Carter " the full and exclusive license, right, and per- mission to have, hold, use, and enjoy Blanch- ard's patent for turning irregular forms, etc., so far as said improvement is or may be used for turning shoe-lasts, boot and shoe trees, and hat blocks, etc. To have and to hold the right and license exclusive of all others, except such per- sons who have received grants or licenses before the date hereof, ' ' etc. The infringing act was the making of shoe-lasts. It was held that Blanehard properlj' brought the suit in his own name. Blanehard v. Eldridge, 1 Wallace Jr. 337. —Sup. Ct. 1849. 21. The plaintiffs were a corporation at a time when the patent stood in the name of a person who was the agent and principal stockholder of the company. That person gave a license to de- fendants, and the complainants, who held the equitable title, were held bound by the same. Troy Iron & Nail Factory v. Corning et al., 1 Blatch. 467.— Nelson, 1849. 22. Under Section 10 of the act of March 3d, 1839, amending and enlarging Section 16 of tlio act of July 4tli, 1836, the assignee of a patent to be issued on an application which stands reject- ed may bring suit in equity in his own name asking for the patent, and for the annulling of an interfering patent. Oay v. Cornell, 1 Blatch. 506.— Nelson, 1849. 23. " The patentee may assign his exclusive right within and throughout a specified part of the United States, and upon such assignment the assignee may sue in his own name for an in- fringement of his rights. But in order to enable him to sue, the assignment must undoubtedly convey to him the entire and unqualified mo- nopoly which the patentee held in the territory specified, excluding the patentee himself as well as others. And any assignment short of this is a mere license." Qayler et al. v. Wilder, 10 Howard, 477.— Sup. Ct. 1850. 24. A grantee under a patent may and must sue in his own name, and not in that of the pat- entee. — n. 35. Although the whole beneficial interest in the patent in suit was in the patentee's assignee, it was held that the patentee was properly joined with the assignee in bringing suit, because ' ' it was perhaps necessary to make him a party to the suit in order to take advantage of the breach 540 PARTIES. of condition." 'Woodwort'h et at. v. Cook, 2 Blatch. 151.— Nelson, 1850. 26. Altliough a grantor may reserve the right to bring suits for infringement in the territory granted, yet, if lie afterward divests himself of all interest in the territory covered by the grant, he need not be joined as a complainant in a suit for infringement. Bieknell et al. v. Todd et al. , 5 McLean, 237.— McLean, 1851. 27. A conveyance under a patent carried the right " to construct and use, and vend to others to construct and use [during the term of said patent] ten planing, tonguing, and grooving machines, upon the principles and description of the renewed patent and amended specifica- tion. ' ■ The instrument further declared : " It is the effect of this covenant that said Van Hook shall enjoy during said extended term an ex- clusive right to the said patent, within the said territory, limited to ten machines, reserving to Wilson the right to prosecute for all infringe- ments of the patent within that territory, and all damages recovered therefor."' It was held that the plaintiffs could not maintain suit for infringement with this title in Van Hook out- standing. Ritteret al. v. Terrill etal., 3 Blatch. 379.— Betts, 1852. 28. " The owner of the legal title to the pat- ent, and the party equitably entitled to the dam- ages, as the person immediately injured by the infringement, being parties to the bill, it cannot be successfully objected to for want of proper parties," although there maybe other parties interested in the profits. Ooodyear et al. v. Central Railroad of New Jersey, 2 Wall. Jr. 356.— Gmer, 1853. 29. Although assignees and licensees may, in some cases, be necessary parties to an accounting, the same parties need not always be necessarily joined in a motion for a provisional injunction. —lb. 30. An objection on account of misjoinder of parties made, for the first time, after hearing and final decree, comes too late. Livingstone et al. V. Woodworth et al., 15 Howard, 546. — Sup. Ct. 1853. 31 . Directors of an infringing corporation who participate in its management, and the agents of the corporation, are parties, and may be re- strained from infringement by injunction. Ooodyear et al. v. Phelps et al., 3 Blatch. 91.— Nelson, 1853. 32. A railroad upon which a patent was in- fringed was held by a corporation chartered by the state of Pennsylvania, but the road was operated by a Marjiaud corporation. The Penn- sylvania road was held liable for infringement. ' Tork & Maryland Line R. B. Co. v. Winans, 17 Howard, 30.— Sup. Ct. 1854. 33. Although the fire department of a city may be a distinct corporation, the city is liable for infringement committed by the fire depart- ment. Ransom et al. v. New York, 1 Fish. P. C. 253.— Hall, 1856. 34. An exclusive licensee under a patent can- not bring suit for infringement. North et al. v. Kershaw etal., 4 Blatch. 70. — Ingbbsoll, 1857. 35. A bill of complaint is not to be dismissed because complainant, after suit brought, parts >. with his patent. Dean v. Mason et al., 20 Howard, 198 — SutP. Ct. 1857. 36. Although a patentee may, after the expira- tion of his patent, convey away the right to what- ever damages or profits are collectible for past infringement, the patentee may sue for such damages or profits in his own name. Bell v. Mc- Cullough et al., 1 Bond, 194. — Leavitt, 1858. 37. " When one in the employment of a cor- poration, in the businessTsf his employment does an act for their benefit and which they adopt and practise and take advantage of, they will be deemed to have authorized the act, and will be as much bound by it as though expressly author- ized." Popperihusen v. N. Y. Outla Perelui Comb Co., 2 Fish. P. C. 63.— Ingehsoll, 1858. 38. " Where one person has the legal title to the patent, and another person has an equitable right in the same, and a suit in. equity is insti- tuted complaining of an infringement, and seek- ing an injunction and an account, the person having the legal title and the one having an equitable right which has been violated should join as plaintiffs." Stimpson v. Rogers et al., 4 Blatch. 333.— Ingebsoll, 1859. 39. A conveyance of an exclusive right to make and sell a patented article in a certain ter- ritory during the term of the patent is a license, and the licensee need not be joined in bringing a suit for infringement. Hassey v. WMteley et al., 1 Bond, 407.— Leavitt, 1860. 40. Licensees under complainants' patent need not necessarily be joined with the complainants in bringing suit for infringement. Oroner & Baker Sewing Mach. Co. v. Sloatetal., 2 Fish. P. C. 112.— Nelson, 1860. 41. Those who hold the legal title to patents, as trustees, may pi'operly bring suit thereon. Potter et al. v. Wilson et al.,2 Fish. P. C. 102. —Nelson, 1860. 42. Where a suit is brought by the owner of a patent for the benefit of his licensees, it cannot be discontinued by the consent of such nominal complainant if the discontinuance is resisted by the real parties in interest, the licensees. Good- PARTIES. 541 year v. Bislwp et al., 4 Blatch. 438. — Kelson, 1860. 43. Different persons were charged in a bill of complaint with infringement under the terms "that the respondents are using," etc. This was held to be sufficient allegation that the de- fendants were acting in concert in their infringe- ment. Defendants also claimed to be the servants of a corporation, and therefore not the proper parties. The court held otherwise. Poppen- husen v. Falke et al. , 4 Blatch. 493.— Shipman, 1861. 44. An action on the case was brought against the Board of Commissioners of Hamilton County, O., for alleged infringement of plain- tiff's patent for construction of jails. The stat- ute law of Ohio, iu its enumeration of matters in respect to which this board might sue, was silent as to actions of tort. The board was held not liable. Jacobs v. Board of Commissioners of Hamilton County, 1 Bond, 500. — Leavitt, 1863. 45. Where a board of county commissioners was authorized by statute to erect a jail contract, and the contractor put in infringing devices, it was held that the contractor was liable for in- fringement, and not the board of county com- missioners. — lb. 46. The unlicensed use of patented machinery by the warden of a United States penitentiary does not constitute such a taking of private prop- erty for public use as will make the Government responsible. Pitclier v. United States, 1 Nott & Huntington, 7.— Casey, 1863. 47. All the executors of a party deceased need not necessarily be joined in bringing suit on the patent which was his. Goodyear et al. v. Provi- dence Rubber Co. et al., 2 Clifford, 351.— Clip- ford, 1864. 48. " Undoubtedly all persons commanding, procuring, aiding, or assisting iu the commission of a trespass are principals in the transaction, and stand responsible to answer in damages to the injured party. Both the master who com- mands the doing and the servant who does the act of trespass may be made responsible as princi- pals, and may be sued jointly or severally for damages, as the injured party may elect." Ldghtner v. Brooks, 3 Clifford, 387. — Cltfpobd, 1864. 49. The president of a railroad made a con- tract with another person to furnish certain cars containing a certain patented improvement. The cars were furnished provided with such im- provement. The making thereof was held not to be an infringement of the patent by the presi- dent. — lb. 50. Although the president of a railroad com- pany may be the agent of the railroad company for the purpose of contracting rolling stock, it does not follow that he is the general agent of the corporation. — lb. 51. Suit was brought upon two patents, the legal title to which was vested in different parties, who held both in trust for the use of the Dental Vulcanite Company. It was held that complain- ants were properly joined. Goodyear et al. v. Hills, 3 Fish. P. C. 134.— Caettee, 1866. 53. "A licensee may proceed by a petition in equity to enjoin any party who has actually in- fringed his right under the license." Brain- mer v. Jones et al., 3 Bond, 100. — Leavitt, 1867. 53. A, being a patent owner, B agreed with him to pay the expenses of procuring an exten- sion, and also other moneys. The extension was procured, but B did not fulfil his promise. A brought suit in equity against C for infringe- ment. C contended that B should have been joined as complainant. The court held other- wise. Aiken v. Dolan,Z'F\sb.. P. C. 197.— Cad- WALADER, 1867. 54. " It is proper, in a suit in equity on a pat- ent, to join as plaintiff, with the owner of the legal title to the patent, the party who is imme- diately injured by the infringement, and who is equitably entitled to the fruits of the recovery in the suit." Goodyear et al. v. Allyn et al., 6 Blatch. 33.— Blatchford, 1868. 55. The president of a transportation com- pany which is made up of various railroad com- panies is not liable as an infringer for the acts committed by the various railroad companies. Lightner v. Kimball, 1 Lowell, 311. — Lowell, 1868. 56. " Under Equity Rule 47, the want of proper parties is not a fatal defect, if the parties are out of the jurisdiction of the court ; and it is quite clear that, in order to constitute the fact of a want of parties a good defence, it should be shown by the plea that the persons alleged to be necessary parties are alive and within the j\i- risdiction of the court." Goodyear v. Toby, 6 Blatch. 130.— Hall, 1868. 57. " It may be well doubted whether, in the case of a bill for an account for an infringement of a patent, the plaintiff is bound to make all joint wrong-doers parties to his bill ; for if they are liable severally, as well as jointly, in equity, as they clearly are at law, the plaintiff may pro- ceed against any one of them alone under Equity Rule 51. "—/J. 58. " Subsequent sale and transfer of the ex- clusive right are no bar to an action to recover damages for an infringement committed before 542 PAKTIES. such sale and transfer." Moore v. Ma/rsh, 7 Wall. 515.— Sup. Ct. 1868. 59. Among the parties joined as complainants in an equity suit was one who claimed as heir at law of the deceased inventor. It was held that he was not properly a party. Hodge et al. v. North Missouri B. B.,1 Dillon, 104. — Trbat, 1869. 60. The question whether the joinder of an unnecessary party as complainant in a bill in equity can be taken advantage of by demurrer is well settled in the affirmative. — JJ. 61. The president of an infringing corpora- tion may properly be made a party. Nichols v. Pearce et al., 1 Blatch. 5. — Blatohford, 1869. 63. Where parties are joined as plaintiffs who do not hold a legal title nor interest in the re- sult, their joinder may be treated as surplusage. DMle v. Augur, 7 Blatch. 86. — Blatchtoiid, 1869. 63. Where, in a suit in the Circuit Court, complainant has bought in the patents under which suit was defended, the defendant has become owner with complainant, and there is no real litigation, the Supreme Court will not pro- ceed with the case. Wood Paper Co. v. Seft, 4 Wall. 333.— Sup. Ct. 1869. 64. " Damages for the infringement of letters- patent may be recovered by the patentee, or by his assignee of the whole interest, or by his grantee of his exclusive right within and through- out, any specified district, by a suit in equity, or by an action on the case, at the election of the holder of the legal title." Blanchard v. Put- ■:uim,, 8 Wallace, 420.— Sup. Ct. 1869. 65. A suit in equity was brought against one Osgood and others in the Southern District of New York. Osgood was simply president and director of a New Jersey corporation which actually committed the alleged infringement acts. The court held that, in order to make Os- good properly a defendant, complainant should have shown either that he could control the op- et-ations of the company, or at least should have joined with him a majority of the directors. Jones Y. Osgood et al, 6 Blatch. 435.— Blatch- FORD, 1869. 66. " It is well settled that neither the act of Congress of 1839 nor Rule 47 of the court en- ables the Circuit Court to make a decree in a suit in the absence of a party whose rights must necessarily be affected by such decree, and that the objection may be taken at any time upon the hearing or in the appellate court." Florence Sewing Mach. Co. v. Singer M'fg Co., 8 Blatch. 113.— WooDKUPF, 1870. 67. Three parties jointly made a license to a fourth upon a certain condition. Said licensee, the complainant, and one of the licensors were within the territorial jurisdiction of the court, but the other two of the licensors were not. Held, that the court could not proceed. — lb. 68. " An interest in the net proceeds of collec- tions under a patent does not necessarily amount to legal ownership of the patent itself." Jordan V. Dobson et al., 3 Abb. U. S. 398.— Strong, 1870. 69. A, owner of a patent, conveyed to B the entire interest in this patent except the right to manufacture the patented machines in certain counties. Held, that B was the proper party to bring suit for infringement. Chambers v. Smith etal., 5 Fish. P. C. 13.— McKbnnan, 1870. 70. A conveyance under a patent contained a provision that the maker did " assign and trans- fer to the said firm of Treadwell & Perry all the right, title, and interest which the said Little- field possessed, and which he might thereafter possess, to the aforesaid invention, improve- ment or patent, or the patent or patents that might be granted for 'said invention or any im- provements therein, and in the extension or ex- tensions thereof, within and throughout the dis- trict and territory embraced within the states of New York and Connecticut,, for and during the term for which the aforesaid patents were grant- ed, and the terms for which any patent for the aforesaid improvement, and any other improve- ment or improvements thereof, or for any ex- tensions of either thereof, might be granted, either to the said party of the first part or his heirs, executors, administrators, or assigns, to manufacture and sell the same within the states of New York and Connecticut. ' ' It was held that the grantee might bring suit in his own name. Pen'y v. Owning et al., 7 Blatch. 195. —Woodruff, 1870. 71. In the suit for the annulment of a patent, • " the fact that the suit is instituted on the behalf of the United States by the person who is dis- trict attorney, and that he acts as such in in- stituting the suit on behalf of the United States, must appear by the face of the bill or declara- tion, or the pleading will be held bad. ' ' United States V. Doughty, 7 Blatch. 434.— Blatchford, 1870. 73. The seats complained of as infringements were put into the public schools of the city of Brooklyn by direction of the Board of Educa- tion. Held, that suit would, not lie against the the city, but would lie against the Board of Ed- ucation. Allen V. City of Brooklyn, 8 Blatch. 535.— Benbdict, 1871. 73. The act of the Legislature of New York, PARTIES. 543 passed March 27th, 1863, Section 39, did not re- lieve the city of Brooklyn from liability for in- fringement of a patent. Bliss v. City of Brook- lyn, SBlatch. 533. -Benedict, 1871. 74. " Want of parties not . . . set up or sug- gested in the defendants' answer cannot avail, unless the case is one in vyhich the court cannot proceed to a decree between the parties before the court, without prejudice to the rights of those who are proper to be made parties, but who are not brought into the court. " Wallace et al. V. Holmes et al., 9 Blatch. 65. — Wood- ruff, 1871. 75. " No one but the Government, either in its own name or the name of its appropriate officer, or in some form of proceeding which gives official assurance of the sanction of the proper authority, can institute judicial proceed- ings for the purpose of vacating or rescinding the patent which the Government has issued to an individual, except in cases provided for in Section 16 of the act of July 4th, 1836." Mowry V. Whitney, 14 Wall. 434.— Sup. Ct. 1871. 76. " Section 16 of the patent act of 1836 seems to have in view the same distinction made by the common law in regard to annulling pat- ents, for while it authorizes individuals claiming under conflicting patents, covered by a patent already issued, to tiy the conflicting claim in Chancery, and authorizes the court to annul or set aside a patent so far as may be found neces- sary to protect the right, the suit by individuals is limited to that class of cases. And it is pro- vided that the decree shall be of no validity ex- cept between parties to the suit. The general public is left to the protection of the Govern- ment and its officers." — lb. 77. The complainants and patent owners had, previous to the present suit, conveyed to third parties all their interest in the patent in suit, in and for the state of Massachusetts, except the right to build the patented machines. Defend- ants contended that the proper parties were not before the court as complainants. The bill charged that defendants had made the patented machines in violation of complainants' rights under the patent. Held, that the bill could be maintained for that infringement, even if it were necessary to join other parties as complainants in a bill alleging infringement only by vending and using. Sanford et al. v. Messer et al., 1 Holmes, 149.— Shbplbt, 1873. 78. " Unquestionably a contract for a purchase of a portion of the patent right may be good be- tween the parties as a license, and enforced as such in the courts of justice ; but the legal right in the monopoly remains in the patentee, and he alone can maintain an action against a third party who commits an infringement upon it." — lb. 79. In -equity the general rule has always been that all parties materially interested in the sub- ject-matter of the suit must be made parties to the bill. Florence Sewing Maeh. Co. v. Grower tSc Baker Sewing Mack. Co. et al., 110 Mass. 1. —Chapman, 1872. 80. A licensee in Massachusetts sought relief, by equity suit, in a Massachusetts state court, against a corporation. Two other organizations located outside of Massachusetts were the li- censors ; the court held that the suit might pro- ceed, although the two corporations located out- side of Massachusetts were not served with proc- ess. — lb. 81. Where two parties have been jointly in- fringing, and one of them has a release, such ]-elease does not discharge the other infringer. Ingelsv. Mast, 6 Fish. P. C. 415.— Swing, 1873. 83. " It cannot be admitted that one party to a suit can pay the fees of counsel on both sides, both in the court below and on appeal, without being held to have such control over both the preparation and argument of the cause as to malie the suit merely collusive in both courts. It can make no difference that the counsel fees were charged to the party apparently though not really liable to pay them, and payment from the other party procured through him. This, indeed, is a circumstance against the party who pays the fees, rather than In his favor." Gard- ner V. Goodyear Dental Vulcanite Co. et al. , 6 Fish. P. C. 329.— Sup: Ct. 1873: 83. A conveyance under a patent for printing- presses conveyed " ' the exclusive right to use, rent, and vend said presses in the county of Worcester, and in the state of Rhode Island.' " Thereof the court said : " Such a contract clear- ly gives the licensee no right of action for an in- fringement of the patent." Hill etal. v. WMt- comb et al., 1 Holmes, 317.— Sheplby, 1874. 84. " To enable the purchaser to sue, the as- signment must undoubtedly convey to him the entire and unqualified monopoly which the pat- entee held in the territory specified, excluding the patentee himself as well as othei%. Any as- signment short of this is a mere license, and the legal right in the monopoly remains in the pat- entee, and he alone can maintain an action against a third party who commits an infringement upon it."— J J. 85. Where, pending a suit against a copart- nership for infringement, one partner dies, his death is to be suggested on the record and the suit proceed against the survivors, it not being necessary to cite in the administrator or executor 5i4 PAETIES. of the deceased. Troy Iron & Nail Factory v. Winslow et al., 11 Blatch. 513. — Woodritff, 1874. 86. " An exclusive license to manufacture for a special use or purpose is not an assignment of the patent, which renders the joinder of the pat- entees in a suit for infringement improper. It is not within the definition of an assignment in the statute. It does not convey the patent, or any specified territory within which the licensee has the exclusive right to make, vend, or use, and is not within any case which it has been held even that the licensee could sue without joining the person in whom the legal title to the patent is vested, still less with any case holding that the latter may not join in the suit in equity ; and, in general, one who has granted an exclu- sive license has an interest in sustaining the right and protecting his license. Presumptively his own rights would be affected by an adverse ad- judication, if called on by the licensee to defend his license." Dorsey Revolving Harvester Rake Co. et al. v. Bradley M'fg Co., 12 Blditch. 202. — Woodruff, 1874. 87. Where respondents are sued as a partner- ship, it may be doubtful whether it would be competent for the court to enter a decree against them as a corporation, but such a pleading may be cured by an amendment. NeedJmm v. Wash- burnet al, 4 Cliff. 254.— Clitfokd, 1874. 88. A licensee may maintain a suit for in- fringement against his licensor. lAttlefield v. Perry, 21 Wallace, 205.— Sup. Ct. 1874. 89. The " power of assignment has been so construed by the courts as to confine it to the transfer of an entire patent, an undivided part thereof, or the entire interest of the patentee, or undivided part thereof, within and throughout a certain specified portion of the United States. One holding such an assignment is an assignee within the meaning of the statute, and may prosecute in the Circuit Court any action that may be necessary for the protection of his rights under the patent." — lb. 90. "A mere licensee cannot sue strangers who infringe. In such case redress is obtained through ot in the name of the patentee or his assignees." — lb. 91. A bill for infringement may be properly brought by the assignor and the owner of a pat- ent, joining with him an assignee who is bene- ficially interested therein. Antlwny et al. v. Carroll, 2 Bann. & Ard. 195.— Shbplet, 1875. 92. " An assignment of past profits and dam- ages for the infringement of a patent, when made in connection with the transfer of the title of the patent Itself, courts of equity will uphold, and the modern doctrine in courts of equity is that if the assignment be absolute and uncondi- tional, and there is no remaining title or interest in the assignor to be affected by the decree, the assignor is not a necessary party." Senry y. Francestown Soapstone Stove Co. ,2 Bann. & Ard. 221.— Shbplet, 1876. 93. A bill for a discovery will not lie against a corporation, although, in order to compel a dis- covery on oath, the ofBcers of the corporation must be made parties ; otherwise the answer is put in under the common seal. Vaughan v. Mast Tenn., Ya. & Ga. R. R. Co., 1 Flippin, 621. -Brown, 1877. 94. Where there are different parties upon the same side in a suit, and all are called upon to make answer, some properly and some improp- erly, those who are called upon must answer. Brandon M'f'g Co. v. Prime et al., 14 Blatch. 371.— Wheeler, 1871. 95. In an original bill, as it was framed, cer- tain parties did not appear to be necessary parties, but, when the facts set up in the cross- bill appeared, they became so. The court said : " When the orator in the cross-bill resorts to it for defence and relief, and makes it appear that they are not only proper but necessary parties to the litigation, the orator not only might but ought to make them parties. ' ' — lb. 96. "A court of equity will not entertain a bill of the assignee of a strictly legal right mere- ly upon the ground that he cannot bring his suit in his own name, unless it appears that the as- signor prohibits or prevents such action from being brought in his own name ; or that the action, if brought, would not afford the assignee an equitable remedy." Walker et al. v. Brooks et al., 125 Mass. 241.— Gray, 1878. 97. In equity the -bankruptcy of a party and the appointment of an assignee does not abate pending suit, but calls for a supplementary bill, citing in the assignee. This can be avoided by a reconveyance to the complainant in suit. Oear V. Fitch, 3 Bann. & Ard. 573.— Lowell, 1878. 98. A licensee may maintain a suit against his licensor, and all parties claiming under the li- censor, to prevent infringement of the patent. Perry v. Littlefleld et al., 17 Blatch. 272.— Blatchpord, 1879. 99. The Board of Education of the city of New York bought and used infringing school seats. The city was held liable. Allen v. City of New York et al. , 17 Blatch. 350. — Wheeler, 1879. 100. " One principal ground of a suit in equity for the infringement of a patent is, to compel an account of the gains or profits accrued to those PARTIES. 545 proceeded against by means of the infringement. Obviously, the proper party to proceed against is tbe one that has received the profits or to whom the gains have accrued." — /J. 101. "The initial litigation, for the purpose of asserting and sustaining the validity of a pat- ent, should be between the patentee and infring- ing manufacturers. After a patent has been judicially sustained in a suit, then the patentee should have the full aid of the courts to suppress the sales of infringing goods." Irwin ei al. v. McRbberts et al., 4 Bann. & Ard. 411. — Blod- GETT, 1879. 102. Where a patent issues to a party he is to be taken to be the owner unless the contrary is made to appear. Am. Diamond Bode Sorinff Oo. V. Sliddon et al., 17 Blatch. 208.— Wheel- er, 1879. 103. Where a complainant owns but half of the patent in suit, and there is no objection made because of non-joinder, complainant's title is sufficient to maintain the suit for the jirotectiou of its interest. — lb. 104. " Can an exclusive licensee maintain a bill in equity for infringement without joining the patentee ? And can the patentee maintain one without joining the licensee?" The court answered both these questions in the negative. Hammonds. Hunt et al., 4 Bann. & Ard. 111. —Lowell, 1879. 105. A licensee cannot sue in equity without joining with him, as, plaintiff, the owner of the legal title. Nelson v. McMann et al., 16 Blatch. 139. — Blatchford, 1879. 106. Complainant held a process patent for manufacturing flour, and sold to another party "the exclusive right to manufacture and sell rolls for crushing grain or middlings, . . . which right or process to manufacture and sell rolls is secured to me by said patent." Held, that com- plainant had the right to sue in his own name for infringement. Downton v. Yaeger Milling Co., 3 McCrary, 414. -Dillon, 1879. 107. Serious doubt expressed whether a court has power to vacate or modify a decree at the instance of a stranger to the suit. Motion to sHch effect was denied. Washburn & Moen M'fg Co. V. Coldwell Steel Barb Fence Co. et al., 1 Fed. Rep. 225.— Shipman, 1880. 108. " In all cases where the assignment does not pass the legal title, and is not absolute and unconditional, or there are remaining rights or liabilities of the assignor which may be affected by the decree, he is a necessary party. ' ' Cook et al. V. Bidwell, 20 O. G. 1083. - Achbson, 1879. 109. " The party in interest must bring the suit, whether at law or in equity, in his own name, and cannot delegate the right to another person, when the suit is not for the benefit in any way of such other person. It is a question of public policy." Ooldsmitt et al. v. Am. Paper Collar Co., 18 Blatch. 82. — Blatchfoud, 1880. 110. " It is the province of the court to take proofs and render decisions only between parties litigant before it, and in respect to claims brought against parties, and to issues actually raised." A decree will not be modified at the instance of third parties. Page et al. v. Holmes B. A. T. Co., 18 Blatch. 118.— Blatchfoud, 1880. 111. " Conveyances pendente lite do not at all affect a litigation between the parties to an orig- inal controversy, unless there are special statutes or circumstances to control ; but courts of jus- tice, even courts of law and especially courts of equity, often protect the rights of the real owners to the fruits of a recovery as against those who are nominal but not real owners, wherever their rights may have been acquired." Campbell v. Jarnesetal., 18 Blatch. 92.— Wheelkk, 1880. 112. "It is not important in equity proceed- ings, for every purjDOse, that all the parties to the controversy should be upon opposite sides in the formal proceedings. It is sufficient that there are citizens of different states on opposite sides of the dispute, although not on opposite sides in the pleadings, for the removal of the cause to the federal courts." — lb. 113. In the United States Circuit Court for the Southern District of New York [the laws of "New York permitting a married woman to hold property of all sorts the same as an unmarried woman], a married woman may bring suit in equity for infringement of her patent without joining her husband. Lorrillard v. Standard Oil Co., 18 Blatch. 199.— Blatchford, 1880. 114. A licensor having granted a single license under a patent to five persons, three of the li- censees, by agreement with the licensor, sur- rendered their interests therein to the licensors. Held, that this was permissible by law, and fur- ther that said releasors need not be joined as plaintiffs in an action under the license against the licensor. Schneider v. TJdll, 18 Blatch. 241. —Benedict, 1880. 115. A city is liable in its corporate capacity for infringement. Munson v. Maym' of N. T. , 18 Blatch. 237.— Wheeler, 1880. 116. A postmaster is not an " officer of the revenue" within the meaning of Section 989 of the revised statutes, and not entitled to receive the certificate provided for In that section mak- ing the Government responsible for the payment 546 PAKTIES. ef a recovery [for infringement of patent] had against the postmaster. Campbell v. James et al., ISBlatch. 196.— Blatchfokd, 1880. 117. Where the owner of an undivided inter- est in a patent, refusing to join in a suit with a co-owner, he may be formally made a party de- fendant. Onderdonk v. Fanning et al. , 4 Fed. Rep. 148.— Benedict, 1880. 118. Campbell, having brought suit for in- fringement against James and recovered therein, Secombe, as administrator, brouglit bill of com- plaint against Campbell and James, on the ground that Secombe 's intestate was the legal or equitable owner of what CampbeH had re- covered. Bill was demurred to, as to James, and the demurrer was sustained on the ground that complainant had no such title to the patent sued on as would entitle him to have a claim against James. Secombe, Adm'r, v. CampbeU et al., 5 Fed. Hep. 804.— Wheeler, 1880. 119. Infringement by the corporate fire de- partment of a city is infringement by the city. Brickill et al. v. New York, 18 Blatch. 273.— Wheelek, 1880. 120. A corporate Board of Education of New York City was sued for Infringement ; the Leg- islature provided a successor to the board under a new name, and then another ; meanwhile the cause proceeded to hearing on merits and decree. Then the final Successor filed an answer, as if it were a new party. The answer was ordered off the files. Allen v. New York, 18 Blatch. 239.— Wheeler, 1880. 131. The former owner of the patent, now sued on, sued certain parties other than the present for infringement, who justified as licensees under another patent and prevailed, the owner of the said other patent voluntarily paying the expenses of said former suit. The parties now sued were also licensees under said other pat- ent. Held, that the parties in the present suit were not bound by said former- adjudication. U. 8. Stamping Co. v. Jewett et al., 18 Blatch. 469.— Blatchfobd, 1880. 122. A third parly, having an interest in the event of the suit, having filed a disclaimer of his interest, it was held that he need not be joined as a complainant. Oraham v. Geneva Lake Crawford M'f'g Co., 1 Fed. Rep. 138.— Dyer, 1880. Ch-aliam v. McCormich et al., 10 Bissell, 39.— Drummond, 1880. 123. Where parties combine to defend a suit for infringement of patent against one of their number, and contribute to the expenses of that defence, they are all bound by the decision in that sviit. Miller et al. v. Liggett & Myers To- bacco Co., 2 McCrary, 375.— McCkary, 1881. 124. Example of joinder of a new party as co- plaintiff at a late stage of the case. Patterson et al. V. Stapler, 7 Fed. Rep. 210.— Nixou, 1881. 125. Where a patentee has sold the exclusive right to the use of the patent, for a term of years less than the term of the patent, reserving shop- rights to the patentee, the latter has an Interest in the patent which enables him to proceed against an infringer. Still et al. v. Reading et al., 4 Woods, 345. -Turner, 1881. 126. " The granting of the reissue to the plaintiff is sufficient proof of his title to sue. ' ' Wooster v. Clark et al., 9 Fed. Rep. 854.— Blatchford, 1881. 127. " The mode of obtaining compensation from the United States for the use of an inven- tion, where such use has not been by the consent of the patentee, has never been specifically pro- vided for by any statute." James v. Campbell et al., 104 U. S. 356.— Sup. Ct. 1881. 128. Doubted that a suit for infringement of patent can be sustained against a public officer who has acted " only for and in behalf of the Government. ' ' — Lb. 129. A patent owner having assigned the pat- ent to others in trust, he need not be joined as co-complainant in a suit for infringement of the patent. Weseott et al. v. Wayne Agricultural Wm-ks et al., 11 Fed. Rep. 298.— Gresham, 1882. 130. " The right to recover for infringement of a patent, like other choses in action, is assign- able in equity, and the real owner of the right is entitled to maintain a suit upon it in equity in his own name." Shaw v. Colwell Lead Co., 20 Blatch. 417.— Wheeler, 1882. 131. Where an assignment carries with it the right to recover for past infringements, the as- signee may maintain an action for such past in- fringements. Consolidated Oil Well Packer Co. V. Eaton, Cole & Burnham Co., 12 Fed. Rep. 865.— Shipman, 1882. 133. A conveyance on which complainant's right to sue rested conveyed to certain parties "and their legal representatives the exclusive right to manufacture and sell my invention in the United States, to the full end of the term for which said letters-patent were granted." It was held that this passed a title upon which complainant might sue in equity. Nellis v. Pen- nock M'fg Co., 22 O. G. 1131.— McKennan, 1882. 133. When the parties to a conveyance have, by their acts, put a construction upon the convey- ance. It is out of place for an entire stranger to the contract to seek to circumscribe its scope by a technical limitation of the spirit and sense PARTIES. 547 ■which the parties impress upon the contract. —lb. 134. By the court : " I am of opinion that the only persons who can be held for damages are those who should have taken a license, and that they are those who own or have some interest in the business of making, using, or selling the thing which is an infringement ; and that an action at law cannot be maintained against the directors, shareholders, or workmen of a cor- poration which infringes a patented improve- ment." United Nickel Co. et al. v. WortMng- tonet al., 13 Fed. Rep. 392.— Lowell, 1883. 135. Application for mandamus to compel a patent to issue should not run against the Com- missioner of Patents, but against the Secretary of the Interior. United States v. Comm'r of Patents, 22 O. G. 1365.— C.a.rtTeii, 1883. 136. While an assignee of a claim for dam- ages for infringement of a patent cannot, per- haps, at common law, maintain a suit in his own name for such damages, he can do so under the statutes. Spring et al. v. Domestic Sewing Mach. Co., 13 Ted. Rep. 446.— Nixon, 1882. 137. By the court : ' ' Any person to whom a part of a patent has been assigned may main- tain the suit alone for the protection of his own interest. The right of the partial owner will not be disputed ; subject nevertheless to a limita- tion that in such a case he must make his co- partners in the ownership defendants In the suit." — lb. 138. Members of a partnership can be sued as infringers individually. Tyler v. Qalloway etal, 21 Blatch. 66.— Blatchford, 1882. 139. The secretary of a voluntary association in the nature of a copartnership who is not a shareholder in the association is not individ- ually hable for an infringement committed by the partnership. — lb. 140. By the court : " The motion of com- plainant to amend his bill by alleging that the defendants were severally president, secretary, and directors of the association, is denied. If intended to aid the suit as one against the de- fendants Individually it is unnecessary. If in- fended to make the suit one against the associa- tion as a whole, the complainant cannot now be allowed to put this suit into that shape."— /6. 141. "The rule is unquestioned that where one person has the legal title to the patent and another an equitable right therein, both must be made parties to the suit in action in equity to restrain infringement." Oamewell F. Alarm Tel. Co. V. Brooklyn, 23 O. G. 1978.— Wal LACE, 1883. 143. Complainant's title was a conveyance which vested it with the exclusive right to make, use, and vend the patented invention, for building and operating telegraph wires and in- struments for fire alarm and police and other municipal intelligence, within any city or village in the United States. It was held that this title was not sufficient to permit complainant to sue for infringement of patent. — lb. 142. The allegation in the bill being that " the patentee, for a valuable consideration, entered into a written agreement with the complainant, whereby the patentee granted unto said com- plainant the sole and exclusive right to sell said patented articles within a certain specified ter- ritory," it was held that complainant did not have a title allowing him to sue for infringe- ment. Ingalls et al. v. Tice, 33 O. G. 3160.— Wallace, 1883. 144. A decree of infringement procured by collusion will be vacated at the instance of an interested third party. Barker v. 2hdd, 15 Fed. Rep. 365.— Wallace, 1882. 145. The assignee of a patentee's claim for in- fringement brought suit in equity, in his own name, after the expiration of the patent, to col- lect the damages. The court said . " The single question remains whether the assignee of a chose in action may proceed by bill in equity to enforce for his own use the legal right of his assignor, merely because he cannot sue at law in his own name ? ... In the present case the complainant had a plain and adequate remedy at law by an action in the name of Allen, whose willingness to permit his name to be so used, in accordance with his agreement to that effect, is manifest from the fact that in the original bill he was named as one of the complainants." Bill dis- missed. Hayward v. Andrews et al., 106 U. S. 272.— Sup. Ct. 1883. 146. The president of a corporation may be sued as party defendant with the corporation, and held as such. Lewis v. Standard Steam. Laundry Macli. Co. et al., 21 Blatch. 184.— Wheelek, 1883. 147. Where it was sought to charge the parties who rented the premises to the actual manufac- turers as infringers, the rent being a percentage of the net sales, the court said : " The fact that they receive ten per cent of the net sales by way of rent does not give them such an interest in the try -squares or in the business that they arc responsible for the profits of (he manufacturer. " Starrett v. Atliol Mach. Co. etal., 14 Fed. Rep. 910.— Lowell, 1883. 148. Complainant was licensed by the paten- tees to manufacture the patented article for the term of ten years, and to sell the same. Held, 548 PARTIES. on demurrer, that such a licensee cannot sue for infringement in his own name in the absence of a showing that he is unable to have the patentee join in the suit. Wilson v. Ghiekering et al., 14 Fed. Rep. 917.— Lowell, 1883. 149. By the court : "I do not definitely un- derstand that Campbell v. James, 104 U. S. 356, definitely decided that a bill in equity will not lie against an officer of the United States for his unauthorized use of a patent solely in the ser- vice of the Government." Forehand et al. v. Porter, 15 Fed. Rep. 256.— Shipman, 1888. 150. Where a corporation is the real defend- ant, and an account of profits and an injunction against the further use of the patented invention is wanted, the suit must run against the corpora- tion in its corporate capacity, and not against a part only of its stockholders and directors indi- vidually. Ambler-^. Choteau etal., 101 U. S. S86.^StJP. Ct. 1883. 151. The devisee or legatee of a deceased per- son does not take any title to a patent which the deceased held as administratrix. Pelham v. Edelmeyer, 31 Blatch. 188.— Wallace, 1883. 152. When the evidence discloses that the com- plainant has no interest in the patent, the bill will be dismissed therefor, at the hearing on the merits. ^ — lb. 153. The appearance of a solicitor for the de- fendant generally is of itself only an appearance for those defendants who have in some manner been served with process. Smith v. Standard Laundry Maeh. Co., 25 O. G. 393. — Wheeler, 1883. 154. If a party named as defendant makes answer to the bill he becomes a party in fact, though not properly served with process. — lb. 155. When a party named as defendant in the bill is the owner of the whole stock in a corpo- ration also named as defendant in the bill, the pretext that he is " doing business in the name of the corporation is too flimsy to shield him from accounting."— 7J. 156. Where a defendant is personally named in a bill and specially interrogated, he is made per- sonally responsible, even though the bill names a corporation as another party, and names said defendant as president of said corporation. — /*. 157. By the court : " No objection having been taken by demurrer, or the answer, to the non-joinder of the other two owners of this license, such non-joinder cannot now be insisted to defeat a decree." Adams et al. v. Howard et al., 23 Blatch. 47.— Wallace, 1884. 158. In a case where the complainants of record own but a part of the patent sued on, the recovery of damages and profits must be limited to such part. — lb. 159. The right of a party to prosecute an equity suit for infringement survives to his legal representatives. III. Cent. R. R. Go. v. Turrill, 4 Sup. Ct. Rep. 5.— Sup. Ct. 1884. 1 1 o U^. 160. For a case wherein complainant was owner of only an undivided interest in the patent in suit, and made his co-owners defendants with the real defendant, see — . Oibbs v. Moefner et al., 33 Blatch. 86.-C0XE, 1884. 161. In an action for infringement of patent against a company and two of its officers, if the officers have participated in the infringement they are liable as infringers, though acting sim- ply as officers of the company in doing it. Nat'l Car B. Shoe Co. v. Terre Haute Car & M'fg Co. etai, 19 Fed. R<;p. 514.— Woods, 1884. 163. " A licensee of a patent cannot bring a suit in his own name at law or in equity for its infringement by a stranger. An action at law for the benefit of the licensee must be brought in the name of the patentee alone ; a suit in equity may be brought by the patentee and licensee together." Birdsell et al. v. Shaliol et al., 112 U. S. 485. - Sup. Ct. 1884. 163. " In a suit in equity, brought by the pat- entee alone, if the defendants seasonably objected to the non-joinder of the licensee, the court might . . . order him to be joined. But when a suit in equity has been brought and prosecuted in the name of the patentee alone, with the li- censee's consent and concurrence, to final judg- ment, from which, if for too small a sum, an ap- peal might have been taken in the name of the patentee, we should hesitate to say that the li- censee, merely because he was not a formal plaintiEE in that suit, could bring a new suit to recover damages against the same defendant for the same infringement." — lb. 164. Where a bill of complaint is brought for the infringement of a patent, and fewer parties are named as complainants than ought to have been, and an objection to the non- joinder is not taken by the answer, and the case proceeds to a final decision, and it is possible to save and pre- serve the rights of the non- joined parties, the case will not be interfered with by reason of an objec- tion to the non- joinder not made until the hearing is reached. Adams et al. v. Howard et al., 33 Blatch. 27.— Wallace, 1884. 165. A suit was brought against Joel Whitney and Arthur E. Whitney, doing business under the name and style of Arthur E. Whitney. The son, Arthur E. Whitney, was shown to be simply an employ§, and the case was dismissed PARTIES. 549 as to liim. McDonald v. Whitney et al., 24 Fed. Rep. 600.— Colt, 1885. 166. A bill of complaint disclosed that a cor- poration was owner of one half of the patent in suit. The suit was brought in the name of the receiver. It was held that he had no title to maintain an action in his own name. Dick et al., Bec'r, etc., v. Struthers et al., 35 Fed. Rep. 103.— AcHBSON, 1885. 167. Where an assignment includes, in terms, all claim for prior infringements, the assignee may sue therefor in his own name. Adamsv. Bel- laire Stamping Co., 33 O. G. 623.— Sage, 1885. 168. Under Section 4915 of the revised stat- utes, where there is an opposing party, it is not needful to make the Commissioner of Patents a party. Graham v. Teter, 33 O. G. 758. — Brad- let, 1885. 169. In a proceeding under Section 4915 of the revised statutes, where the inventor has as- signed an interest, the assignee should be joined with him. — lb. 170. Where it is sought to recover a penalty for improperly stamping an article as patented, it must be proved that the marks were affixed for the purpose of deceiving the public. The acts and beliefs of the officers of a corporation are the acts and beliefs of the corporation. lompkins v. Butterfield et al., 33 O. G. 758. — Nelson, 1885. 171. A, patentee and owner of his patent, as- signed it to B. B subsequently reconveyed to A all of B's right " to apply the invention for the purpose of lighting gas-jets. ' ' A subsequent- ly conveyed to C all his right. C brought suit for infringement. It was held that C was a mere licensee, and unable to maintain a suit in his own name. Bogart et al. v. Hinds, 33 O. G. 1268.— CoxB, 1885. 172. Where a person has simply a license to use a patent for a specific purpose, he, alone, cannot maintain action for infringement. Cot- tle V. Erementz et al., 25 Fed. Rep. 494.— Coxb, 1885. 173. The owner of a patent conveyed it to the complainant, reserving the right to himself to use and to license others to use the process pat- ented, " to mash an aggregate of four thousand bushels of grain in each and every twenty-four hours, and convert 'the same into distilled spirits," and also to license proprietors of cer- tain specified distilleries to use the patented process. It was held that complainant's right was in the nature of a license, and that suit could not be maintained in the complainant's name. Frankfort Whiskey Process Co. v. Pep- per et al., 26 Fed. Rep. 336.— Wallace, 1885. 174. Where a party has a possible reversion- ary right in a patent, that party may properly be joined as a complainant. Otis Bros. M'fg Co. et al. V. Crane Bros. M'fg Co., 27 Fed. Rep. 550.— Blodgett, 1886. 175. Complainant had an assignment of a pat- ent from the administrators of his father, the patentee. This assignment stated that the patent had been set ofi; to the widow under state ex- emption laws, but it also stated that she had as^ signed it to complainant, and that assignment was produced. Complainant was held to have a good title. Donoughe v. Hubbard et al., 35 O. 6. 1561.— Bradley, 1886. 176. In a bill against the Commissioner of Patents to cause him to issue a patent, the Sec- retary of the Interior need not be joined. Kirk V. Commissioner of Patents et al., 37 O. G. 451. —Merrick, 1886. 177. A patent owner conveyed to a firm, of which she was a member, the exclusive right to make, use, and vend, under the patent, cove- nanting to prosecute all infringers, but not re- serving any right to the damages recovered. The court was of the opinion that under the cir- cumstances suit for infringement should be brought in the name of the firm. Hermann^M. Hermann, 37 O. G. 892. -Brown, 1886. 178. " If a corporation is engaged, without license, in the manufacture of an article pro- tected by letters-patent, its acts in that behalf are unlawful, and its managing officers cannot shield themselves from individual liability to an injunction upon the plea that what they have done was done as officers or agents of the cor- poration, and not in their own behalf as princi- pals." Iowa Barbed Steel Wire Go. v. Southern Ban-bed Wire Co., 30 Fed. Rep. 123.— Thayer, 1887. 179. Counties in Kentucky are liable for in- fringements of patents. May et al. v. Mercer Co., 30 Fed. Rep. 246.— Barr, 1887. 180. There is no principle of law, in the ab- sence of any statutory provision, by virtue of which a county in Wisconsin can be held for the infringement of a patent, in an action for a trespass. Mayy. Juneau Co., 30 Fed. Rep. 241. — BuNN, 1887. - 181. " Under the Ohio Code of Procedure, an assignee of a chose in action, being the real party in interest, may sue in his or her own name without joining the assignor." May v. Logan Co., 30 Fed. Rep.' 250.-Jackson, 1887. 182. Counties in Ohio are liable to be sued for infringements of patents. —lb. 183. A suit being brought in a state court against A, B, and C, the party C made no con- 550 PATENTS AS PEOPBETY. test, and suffered a decree' p^-o confesso. The parties A and B being beaten, appealed to the Supreme Court of the state ; from thence they took writ of error to the United States Supreme Court. A then sought to become a party to the suit. He was held not to have that right. Marsh V. Nichols, 120 U. 8. 698.— Sot. Ct. 1887. 184. A county in Michigan is liable to suit for infringement of a patent. May v. Saginaw Co., 83 Fed. Rep. 629.— Brown, 1887. PATENTS AS PROPERTY. Casks. 1. When a patent is void through fraud in its procurement, a promissory note given for an in-, terest therein is void. Bliss v. Negus, 8 Mass. 45. — Sedgwick, 1811. 2. For a patentee to sell an interest in liis pat- ent, which he knows to be void, is a fraud for which action will lie. Bull v. Pmtt, 1 Conn. 342.-SWIPT, 1815. 3. When a patent is void, that avoids a con- tract to pay money for an interest therein. Bel- las V. Hayes, 5 Serg. & Rawle, 427. — Gibson, 1819. 4. When a patentee knows his patent to be void and sells a right therein, that fact will avoid a promise to pay money for the sale. Tur- ner v. Johnson et al., 2 Crauch C. C. 287. — CUANCH, 1822. 5. A lack of utility in a patented improve- ment may avoid a promissory note given for a conveyance of an interest in the patent. Burn- ham V. 'Brewster, 1 Vt. 87. — Hutchinson, 1828. 6. A partial failure in the utility of a patented tiling will not avoid a promise to pay money for a conveyance of interest in the patent.' WilliaTns v. Hicks, 2 Vt. 36.— Paddock, 1829. 7. Entire lack of utility in a patented device will avoid a promise to pay money for an inter- est in the patent. Dickinson v. Hall, 14 Pick. 217.— Shaw, 1833. 8. If a patented thing be wholly useless, that will avoid a promise to pay money for an inter- est in the patent. Fallis v. Ch-iffith, Wright, 803.— Wright, 1833. 9. Public use of an afterward patented thing [acts of 1793 and 1800] avoids the patent, and avoids a promise to pay money for an interest therein. Earl v. Page,% N. H. 477.— TJpham, 1834. ' 10. Failure of title in the assignor of a patent right avoids a promise to pay money for the con- veyance. Kernodle v. Hunt, 4 Blatch. 57. — Stevens, 1835. 11. When it is shown that a patent is void for lack of novelty, that avoids a. promise to pay money for an interest therein. Cross v. Hunt- ley, 13 Wend. N. Y. 385.— Nblson, 1885. 12. The sale of a patent imports no warranty of title, and, in the absence of expressions guar- anteeing the novelty of the patent, furnishes no basis for a refusal to pay money agreed to be paid for the transfer of the patent. Hiatt v. Twomy, 1 De. & B. Eq. 315 —Daniel, 1836. 13. Recording is essential to the validity of an assignment, and an assignment given by an assignee whose assignment is not recorded is worthless and will not support a promise to pay money therefor. Higgins v. Strong, 4 Black- ford, 182.— Dbwht, 1836. 14. In an action to recover on a promissory note given for a patent right which the patentee of the note guarantees to be valid, if the patent prove invalid, the consideration for the note fails. Davis v. Bell et al. , 8 New Hampshire, 500. -Richardson, 1837. 15. Where promissory notes have been given for an interest in a patent, and have been vol- untarily paid with knowledge of all material facts, the payer cannot afterward recover back the money for any failure of consideration. Stevens v. Head, 9 Vt. 174.— Williams, 1837. 16. A void patent is a worthless consideration as a basis for a proinissory note. Head v. Stevens, 19 Wend. 411.— Williams, 1837. 17. In an action on a note, where the right in a patent is the consideration therefor, the ques- tion of sufficiency of consideration is to be de- cided by the court and not by the jury. Pottle V. Thomas, 12 Conn. 565. — Williams, 1838. 18. If a patent covers a useful and valuable improvement at the time of its sale, the consid- eration of a promissory note given therefor is not impeached by showing that sub-sequent im- provements have superseded the patented im- provement. Harmon v. Bird, 22 Wend. 113. — Bronson, 1889. 19. In an action to recover money due for an interest for a patent right, a plea which admits existence of the patent but denies its validity is bad. Bennett v. Martin, 6 Mo. 460.— Tomp- kins, 1840. 20. Notes given for a void patent right are without consideration arid void. Money paid thereon may be recovered back, and equity will enjoin against the payment of such notes. Darst V. Brockway, 11 Ohio, 462. — Btjchard, 1842. 21. A note given for a patent right, which is neither new nor useful, is without consideration and void. Duribar v. Marden, 13 N. H. 311.— Woods, 1842. PATENTS AS PEOPERTY. 551 32. " If an assignment be not recorded in tlie office of llie Secretary of State of the United States, a note given to tlie assignee for such righit is invalid for the want of consideration." Mc- Fall V. Wilson, 8 Blaclsford, 260, per curiam, 1843. 23. A patent that laclis novelty and utility is not a good consideration for a promissory note. Oeiger v. Cook, 3 Watts & Serg. 266.— Seb- GBANT, 1844. 24. Lack of utility in a patent will not avoid a promissory note given for an interest in it. MuUiken v. Latcliem, 7 Blackf . 136. — Sullivan, 1844.. 25. While a promise to pay money for a pat- ent right may be wholly void by reason of the worthlessness of the patent, a mere lack of util- ity, in degree, cannot be held to affect such a promise to pay. Vaugliam v. Porter, 16 Vt. 266.— Rbdpield, 1844. 26. The right to an extension is to be dealt with, after the decease of the patentee, the same as an interest in an original patent, and passes, with other rights of property belonging to him, to the . personal representatives as a part of the effects of the estate. Wilson v. Bousseau et al., 4 Howard, 646.— Sup. Ct. 1846. 27. Where a patent owner sells his jjatent, practically guaranteeing , its validity as against third parties, in a suit to recover the considera- tion, he who owes that consideration cannot set up the invalidity of the patent. Ball v. Murry, 10 Pa. 111.— RoGEBS, 1848, 28. A sold B an interest in a patent, with the election on B's part to return that interest in a certain time, thereupon cancelling the purchase. A's title was defective at the time of making the sale, but he cured the defect within the time al- lowed B for avoiding the contract. B did not avoid the contract within the lime last named, and was held as a purchaser. Hotchkiss v. Oliver, 5 Denio, 314.— McKissocK, 1848. 29. Parol evidence is admissible to show that a patented device is worthless, and that there- fore the consideration of a note given for an in- terest in the patent has wholly failed. Sooit v. &weet et al., 2 G. Green, 224.— Williams, 1849. 30. A sold a machine to B, agreeing that if B had to pay a patent charge, it should be borne by A. A person demanded such Charge of B, and B paid it without suit. This was held sufficient to put this charge upon A without B proving that the machine was within the patent. Orr v. Burwell, 7 Alabama, 278. — Dorgan, 1849. 31. " It is a mistake to suppose that there can be no right of property until application is made for a patent. There is no right which will give the inventor an action for infringement of the invention ; but the invention, if valuable, is prop- erty which may be sold in the market, the in- ventor undertaking to procure a patent. ' ' Bath- lone et al. V. Orr et al., 5 McLean, 131. — Mc- Lean, 1850. 32. Lack of utility in a patented device will not avoid the payment of a promissory note given for an interest in the patent therefor. Mardesty V. Bmith, 3 Ind. 39.— Peekins, 1851. 33. A note given for a patent right is avoided by proving that the patent is void. Hollida/y v. Blieem, 18 Pa. St. 468.— Black, 1852. 34. A sold a patent to B, telling him it would be valuable in his business. A sued B for the consideration of the sale, and B set up that the patent was not valuable in his business. The plea was held bad. Loudon v. Burt, 4 Ind. 566. — Perkins, 1853. 35. Where a party has purchased an interest in a patent and realized profit therefrom, and then brings suit to have the contract of sale re- scinded and the consideration- to be repaid to him, such rescission will not be ordered in the absence of an accounting of the profits made by the party who purchased the interest. Ed- ■munds v. Meyers et al., 16 111. 207. — Scatks, 1854. 36. Where A assigns an interest in a patent to B, and B assigns it to C, C cannot have any re- scission of the contract between A and B on the ground of wrongdoing between A and B, unless has been injured thereby. Edmunds v. Hil- dretJi, 16 111. 214.— Scates, 1854. 37. The fact that a patented improvement is of but little value will not avoid a promissory note given for an interest in the patent. Myers et al. V. Turner et al., 17 111. 179.— Caton, 1855. 38 The sale of a patent without warranty imports no warranty. In order to make any untrue representation of the patent the ground of an action for fraud or deceit, the representa- tion must have been known to be false by him who gave it. Jolliffe v. Collins et al., 21 Mis- souri, 338.— Scott, 1855. 39. Where A has sold an interest in a patent to B, and B has sold an interest in the same pat- ent to C, B cannot s?t up the failure of the pat- ent to avoid his promise to pay money to A for his interest in the patent. Thomas et al. v. Quintard, 5 Duer, 80. — Hoffman, 1855. 40. In an action to recover money promised to be paid for an interest in a patent, the invalidity of the patent is not a defence. Cansler v. Eaton, 2 Jones' Eq, K C. 499.— Nash, 1856. 41. Where an interest in a patent is conveyed under an instrument in writing, appurtenant 652 PATENTS AS PROPERTY. warranty may be proved by parol testimony. McClure v. Jeffry, 8 Ind. 79.— Davison, 1856. 42. A promise to pay money for a patent right, when no such patent right exists. Is void. Brown v. Wright, 17 Ark. 9.— Hanlt, 1856. 43. A promissory note given for a patent right, where the patent right proves to be worthless, is void. Bierce v. Stocking, 11 Gray, 174, per curiam, 1858. 44. In an. action to recover money promised to be paid for an interest in a patent, it is compe- tent to show, in bar of the action, that the in- vention is worthless and the patent void. Mc- Dougal v. Fogg, 3 Bosworth, 387. — Pibhpont, 1858. 45. Fraudulent representations in the sale of a patent will avoid the sale. Pierce v. Wilson, 34 Ala. 596.— RrcE, 1859. 46. Where a person has paid money for an in- terest in a patent which is void of utility, he may recover it back again. Fosa v. Richardson et al. , 31 Law Rep. 670.— Huntington, 1859. 47. " Section 10 of the patent act of July 4th, 1836," " recognizes a new and useful invention or discovery made by any one as property which, in case of the death of the inventor without a will, goes to his heirs at law, by a patent in the name of his administrator, as trustees for such heirs at law : and, in case of the death of the in- ventor leaving a will, goes to the person or per- sons to whom the same is given by the will, the exclusive right to use the invention being secured (o the person or persons to whom such property is given by the will, by a patent in the name of the executor, who is to hold the legal title in trust for the person or persons to whom the property is given by the will." Stimpsony. Badgers et al., 4 Blatch. 333. — Ingersoi>l, 1859. 48. Lack of novelty or utility in a patented device will avoid the payment of a note given for an interest in the patent. Midkiff v. Boggess et al., 15 Ind. 210, per curiam, 1860. 49. If a person takes a deed of a patent right, not merely for the purpose of examination, but as a deed vesting the property in him, and hav- ing read it, or having appeared to read it, and proceeded to act under it, and made payments on account of it, he cannot recover back the con- sideration for which the deed stipulated merely because there had been a misunderstanding as to the meaning of the deed as to the extent of the rights conferred. Fosa v. Richardson, 15 Gray, 303.— Hoar, 1860. 50. In the case of an insured machine destroy- ed by Are, the fact that such machine was pat- ented is an immaterial fact. Commonwealth Insurance Co. v. Sennett, 37 Pa. 308. — Thomp- son, 1860. 51. A partial lack of utility will not avoid the payment of a note given for an interest in the patent, but entire failure of utility will. Cragin et al. V. Fowler et al., 34 Vt. 326. — Pibkpont, 1861. 52. Total failure in a patented thing will avoid a promise to pay money for an interest in the patent thereon. Hawes v. Tioogood, 12 Iowa, 582.— Wright, 1862. 53. Entire lack of utility in a patented device will avoid the payment of a note given for an interest in the patent. Lester v. Palmer, 4 AUen, 145.— Dewey, 1862. 54. A useless patent right is void as a con- sideration for a promissory note. Rowe v. Blan- chard et al., 18 Wisconsin, 462. — Dixon, 1864. 55. A partial lack of utility in the patent will not avoid a sale of a right in the patent therefor. Miller v. Young's Administrator, 33 111. 354. — Beckwith, 1864. 56. Entire lack of utility of the patented thing will not avoid the payment of a note given for an interest in the patent, dough v. Patrick, 37 Vt. 421.— Barrett, 1865. 57. Entire lack of utility in a patented device will not avoid the payment of a note given for an interest in the patent. Cowan et al. v. Bodd et al, 3 Coldwell, 278.— Deaderick, 1866. 58. Where, in the sale of a patent, the written instrument evidently contemplates the possibili- ty of invalidity of the patent, such invalidity fur- nishes no defence to an action for the recovery of the consideration. Johnson v. Willimantic Linen Co., 33 Conn. 436.— Butler, 1866. 59. A sold to B, for a certain consideration, a. steam-engine with a cut-off which was patented ; A had license to make the same. Subsequently B was enjoined against the use of the cut-off under a prior patent. It was held that the value of the cut-off should be deducted from the price of the engine as a whole. Pacific Iron Woi-ks v. Newhall, 34 Conn. 67.— Hinman, 1867. 60. In an action on a note given for accrued royalties, the licensee cannot defend on the ground that some other party claims that the patent in question is void. Davis v. Gray, 17 Ohio St. 330.— BRrPTEERHOFF, 1867. 61. A sold to B an interest in an extended pat- ent, B giving his note therefor. In an action on the note, B sought to introduce the Patent Office proceedings upon the application for the exten- sion in order to show the invalidity of the pat- ent, but was not permitted to do so. B also sought to show the invalidity of the patent by the testimony of experts. B was not permitted PATENTS AS PROPERTY. 553 to do so. McMalion v. Tyng, 14 Allen, 167. — Wells, 1867. 63. Where a patent is the consideration for a promise to pay money, a lack of utility of the patented device will not avail as a defence. Zeavitt et al. v. Conn. Peat Co., 6 Blatchford, 139 — Shipman, 1868. 63. "The titles to patents for inventions are regulated by acts of Congress. By those acts the interest of the patentee passes to the personal representative in the state of the domicile, and remains In him until assignment to the parties beneficially interested therein, or to the vendee thereof in case of sale in course of administra- tion." Hodge et al. v. North Missouri B. B.,\ Dillon, 104.— Treat, 1869. 64. A false statement, by a patent seller to the buyer, that the invention of the patent he sells is not covered by any other patent, avoids the sale, and the buyer may recover back the money he pays. David v. Park, 103 Mass. 501. —Gray, 1870. 65. In an action on a promissory note given as a part of th3 consideration for the purchase of a patent right, the defendant may plead in bar to the action that he made the purchase through the false or fraudulent representations of the patent owner, and this defence will avail, even though defendant, on discovering the fraud, did not offer to reassign the right. Oroff v. Housel, 33 Maryland, 161. -Miller, 1870. 66. The failure of novelty and utility in a pat- ented article avoids the payment of a note given for an interest in the patent. First National Banhy. Peck et al., 8 Kansas, 660. — Brewer, 1871. 67. Independently of the effect of particular state statutes, "it is not doubtful that a guar- dian of the person and estate of an infant, ap- pointed by the Court of Probate, has, as inci- dental to his office and duties, the power to sell personal property of his ward," including the interest of the ward in letters-patent. Wallace et al. V. Holmes et al., 9 Blatch. 65.^ — Wood- KUPF, 1871. 68. Lack of utility or novelty in a patented article will avoid the payment of a note given for an interest in the patent. Johnson v. Mc- Gabeet al., 37 Ind. 535.-Bdskirk, 1871. 69. False and fraudulent representations of the value of the device of a patent will avoid a con- tract for the sale of an interest therein, and allow the buyer to recover back his money. Page v. DiclKrson, 28 Wisconsin, 694.— Cole, 1871. 70. A sold to B an interest in a patent, upon payment of $:'.000 to be made within one year, and, in default thereof, B to reassign the inter- est. The $1000 was not paid within the year, and shortly afterward B offered to reassign. It was held that B offered to do all he had agreed to do. Manville v. Holdredge, 45 N. Y. 151. — Allen, 1871. 71. In an action on a promissory note, the maker of the note sought to prove the invalidity of the patent as a defence. It was held that, in order to make this defence effectual, he must prove the prior existence and known use of a machine having the same parts and producing the same result. Butch v. Boyer, 8 Philadel- phia, 57.— Lynd, 1871. 72. " The rights conferred by the patent law, being property, have the incidents of property, and are capable of being transmitted -by descent or devise, or assigned by a grant." Carew v. Boston Elastic Fabric Go., 1 Holmes, 45,— SHBPr LEY, 1871. 73. Where a note has been given for an inter- est in a patent right, the use of the patent is con- clusive evidence of value and utility, and pay- ment of the note cannot be avoided. Cowan et al. V. Mitchell, 11 Heiskel, 87.— Freeman, 1872. 74. The purchasers of a patent right, in the absence of a sample of the patented thing, have a right to rely upon the representations made to them by the seller as to what is covered by the patent. Base et al. v. Hurley, 39 Ind. 77. — DowNLY, 1872. 75. Entire failure of utility in a patented arti- cle will avoid the payment of a note given for an interest in the patent therefor. Elkins v. Kenyan et al., 34 Wisconsin, 93. — Cole, 1874. 76. A license upon royalty given under u, worthless patent is without consideration and void. Jenkins v. Abbott, 54 N. II. 447. — Smith, 1874. 77. If a patent is invalid, a promise to pay money for an interest therein is without consid- eration and void. Eice v. Qarnha/rt, 34 Wiscon- sin, 453.— Lyon, 1874. 78. A license upon royalty is avoided by a Judicial finding that the patent is void. Mars- ton V. Swettet al.,4: Hun, 153.— Learned, 1875. 79. Where a patent owner sells a patent upon a royalty, guaranteeing its validity, and the pat- ent turns out to be invalid, the patent owner cannot recover the royalty. Hawkes v. Swett et al., 4 Hun, 146. —Learned, 1875. 80. An inventor. A, applied for a patent, and, pending application, assigned one half thereof to B. B subsequently reassigned to A, pending the application, receiving from A a promissory note. ■Subsequently the patent issued to B with- out the approval of the inventor. A thereupon sought to escape the payment of his note. It 554: PATENTS AS PEOPEETY. ■was held that he could not. Clark v. Smith, 21 Minnesota, 539. — Berry, 1875. 81. A patent right can be reached for the benefit of a creditor by a creditor's bill, and the .same result may be accomplished by proceedings under the code of New York state. Barnes v. Morgan, 3 Hun, 703.— Brady, 1875. 82. Where A, a patent owner, sold to B one fourth of his interest in 'his patent for $1000, conditioned that if B did not realize from sales thereunder the said $1000 within three years, then A would repay the $1000 upon a reconvey- ance of B's Interest, it was held that B must make reasonable efforts to make sales. Berger ei al. V. Peterson, 78 111. 633. -Smith, 1875. 83. A mortgage note was given as a consider- ation for a license under a patent. When the patent expired, the note had not been paid. It was held that the mortgage was valid and might be foreclosed. Amry v. Bushnell, 123 Mass. 349. - Colt, 1877. 84. On motion a court may compel a judg- ment debtor to execute the order of his receiver and make assignment of his letters-patent. Olan Eandld v. Wyckoff, 41 N. Y. Superior, 537.— Frebdman, 1877. 85. A subscribed for shares in B's patent with- out being held to payment therefor, the real consideration being that the subscription by A would induce others lo purchase shares in the patent. Another did purchase shares in the pat- ent, and gave his notes therefor. The notes came into the hands of A. It was held that they were good in the hands of A. Lane v. Smith, 68 Me. 178.— Dickbrsok, 1878. 86. Where a patent is void, a promise to pay money for an interest therein is void. Harlow V. Putnam et al., 134 Mass. 553.— Soulb, 1878. 87. A patent right cannot be, by law, levied upon and sold under execution. Campbell v. James et al., 18 Blatch. 93.— Wheeler, 1880. 88. " The incorporeal and intangible right of an inventor or an author in a patent or copyright may not be taken on execution at law ; and a general assignment of his property, under a bankrupt or insolvent act, will either by its own efEect pass his right to the assignee in bankruptcy or insolvency, or will at least entitle the latter by proper procedure to assign the same. " Car- ver V. Peck, 131 Mass. 291.— Gray, 1881. 89. " Patent rights of a bankrupt pass by act and operation of law to his assignees in bank- ruptcy for the benefit of creditors." — lb. 90. The rights of a patentee in his patent may be sold under a decree of a court and the pro- ceeds applied to the payment of his debts ; an injunction may be granted to restrain the pat- entee from selling or assigning the patent during the pendency of the suit, and the patentee may be compelled to execute such assignment of the patent to the purchaser as may be necessary to vest the title in conformity with the patent laws of the United States. Murray v. Ager et al. , 20 O. G. 1311.— Hagnbr, 1881. 91. " A patent right may be ordered by a court of equity to be sold and the proceeds ap- plied to the payment of a judgment debt of the patentee." Ager et al. v. Murray, 105 U.,S. 136.— Sdp. Ct. 1882. 92. Complainant sought by bill in equity to have defendant's patent applied to the payment of a debt due from defendant to complainant. Both were citizens of the same state, and bill was dismissed for want of jurisdiction. Byan, V. Lee, 10 Fed. Bep. 917.— Treat, 1883. 98. By the court : " Whatever right to use the patented machine a defendant, in an execu- tion, may have, passes with the machine when sold by the sheriff to his vendee." Wilder r. Kent et al., 23 O. G. 831.— Acheson, 1883. 94. The devisee and legatee of a deceased per- son does not take any title to a patent which the deceased person had as administratrix. Pelham V. Melmeyer, 31 Blatch. 188.— Wallace, 1883. 95. " A patent right, like any other personal property, is understood by Congress to vest in the executor and administrator of the patentee, if he has died without having assigned it." Shaw Relief Valve Co. v. New Bedford, 19 Fed. Rep. 753.— Lowell, 1884. 96. On the death of a patentee, his patent be- comes the property of his heirs, to be disposed of by the administrator or executor. Bradley et al. V. Dull et al., 19 Fed. Eep. 913.— Achbson, 1884. 97. Ownership and interest in a patent de- scends to the administrator and not_to the heirs, and is to be administered as is all other person- alty of the deceased. Hewitt et al. v. Pa. Steel Co., 31 O. G. 1687.— Butler, 1885. 98. A bill in equity was brought to subject a patent right to the payment of complainant's judgment debt. Subsequent to the rendition of the judgment for the debt, the defendant, Dixon, assigned the patent in question to his daughter, under circumstances tending to show that the transfer was simply a cover. The patent was held for the debt, in the daughter's hands. Oorrell v. Dickson et al., 36 Fed. Rep. 454. — Acheson, 1886. 99. " A patentee's right of action for an in- fringement of his patent survives to his personal representatives ; and it is well settled that his executor or administrator may not only sue on PATENTABLE SUBJECT-MATTER. 555 such cause of action, but may assign or transfer the same to another. A patent right, with all the incidents arising from Infringements thereof, is personal property, and goes, upon the death of the patentee, assignee, or grantee, to his ex- ecutor or administrator." May v. Logan Co., 30 Fed. Rep. 250.— Jackson, 1887. PATENT OFFICE EMPLOYEE. " Patent Office Employee" in the Patent Acts. Act approved July 4th, 1836. Section 2. And ie it furtlier enacted, . . . " Said Commissioner, clerks, and every other person appointed and employed in said office, shall be disqualified and interdicted from acquir- ing or taking, except by inheritance, during the period for -whicli they shall hold their appoint- ments, respectively, any right or interest, directly or indirectly, in any patent for an invention or discovery vyhich has been, or may hereafter be granted." [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 16. And be it further enacted. That all officers and employes of the Patent Office shall be incapable, during the period for which they shall hold their appointments, to acquire or take, directly or indirectly, except by inheritance or bequest, any fight or interest in any patent is- sued by said office. [Repealed June 32d, 1874.] Act approved June 23d, 1874. Sec. 480. All officers and employes of the Patent Office shall be incapable, during the period for which they hold their appointments, to acquire or take, directly or indirectly, ex- cept by inheritance or bequest, any right or in- terest in any patent issued by the office. Cases. 1. He who makes an invention while in the employ of the Patent Office may properly patent it after he leaves that employment. Foote v. Frost et al., 3 Bann. & Ard. 607.— Lowell, 1878. 2. As soon as employment in the Patent Office ceases, the ex-employe " is in the same position, as to procuring patents for any of liis inven- tions, " as if he had never been in such employ- ment." Page et al. v. Holmes Burgla/r Alarm Tel. Co., 17Blatch. 484.— Blatchfokd, 1880. PATENTABLE SUBJECT-MATTER. "Patentable Sdbject-Mattbk" in the Patent Acts. Act approved April 10th, 1790. Section 1. This section makes patentable " any useful art, manufacture, engine, machine, or device, or any improvement therein not be- fore known or used, " etc. [Repealed February 21st, 1793.] Act approved February 21st, 1793. Sec. 1. This section makes patentable " any new and useful art, machine, manufacture, or composition of matter," etc. [Repealed July 4th, 1836. Act approved July 4th, 1836. Sec 6. This section makes patentable " auy new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter," etc. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 24. This section makes patentable " any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof," etc. [Repealed Juno 22d, 1874.] Act approved June 22d, 1874. Sec 4886. This section makes patentable "any new and useful art, machine, manufac- ture, or composition of matter, or any new and useful improvement thereof, ' ' etc. Cases. 1. "A patent can in no case be for an effect only, but only for an effect produced in a given manner, or by a peculiar operation." Whitte- more et al. v. Cutter, 1 Gall. 478. —Story, 1813. 2. " Principles" means not elementary princi- ples of motion [wheels, etc.] hvA. modus operandi, the peculiar device or manner of producing any given effect.— JJ. 3. A mere abstract principle is unsusceptible of appropriation by patent. Eva-ns v. Eo,ton, 1 Peters's C. C. 323.— Wash. 1816. 4. A discovery of some new principle, theory, or elementary truth, abstracted from its practical application, is not an invention. The discovery must be embodied in something visible, tangible, vendible. Wldtney et al. v. Emmett et al. , 1 Bald. 303.— HoPKiNSON and Baldwin, 1831. 5. " A patent may be for a mode or method of doing a thing."— /S. 6. A claim which concludes all modes of doing anything, when the patentee has invented but one mode, is a claim for an abstract principle and is void. Stone v. Sprague et al., 1 Story, 370.— Story, 1840. 7. A specification said : " It is claimed as new to cut ice of uniform size by means of an ap- paratus worked by any other power than hu- man." "Such a claim is unmaintainable in 550 PATENTABLE SUBJECT-MATTEK. point of law. It is a claim for an act or princi- ple in the abstract." Wyetli et al. v. Stone et al., 1 Story, 273.— Stoky, 1840. 8. "A party may claim to have discovered some new part of a machine which is useful, or some new combination, or, in other words, new arrangement of old parts which is useful. Either is patentable." Hovey v. Stevens, 3 W. & M. 17.— WOODBDRT, 1846. 9. If from the nature and character of ingre- dients used, they are not capable of such exact description " as enables the making of the com- pound to be understood," the inventor is not entitled to a patent. Wood v. UnderMll et al., 5 Howard, 1.— Sup. Ct. 1847. 10. " The propulsive effect of vertical motion of water in a reacting wheel, operating by its centrifugal force — and so directed by mechanism as to operate in the' appropriate direction — . . . is a valid subject of claim, and properly to be secured by letters-patent." Parker v. Hulme, 7 West. L. J. 417.— Kane, 1849. 11. " All machines may be regarded as merely devices by the instrumentality of which the laws of nature are made applicable and operative to the production of a particular result. He who first discovers that a law of nature can be so ap- plied, and, having devised machinery to make it operative, introduces it in a practical form to the knowledge of his fellow men, is a discoverer and inventor of the highest grade — not merely of mechanism— the combination of iron, brass, and wood in the form of levers, screws, or pul- leys — but of the force which operates through the mechanical medium—the principle, or, to use the synonym given for this term in the act of 1793 — the character of the machine, and tliis title as a discoverer he may lawfully assert and secure to himself by letters-patent ; thus estab- lishing his property, not only in the formal de- vice for which mechanical ingenuity can at once, as soon as the principle is known, imagine a thousand substitutes— some as good, others bet- ter, perhaps all dissimilar, yet all illustrative of the same principle, and depending on it, but in the essential principle which his machine was the first to embody, to exemplify, to illustrate, to make operative, and to announce to mankind. " This is not . . . to patent an abstraction, in the sense which this expression has been used in the arguments on the subject. It is rather to patent the invention as the inventor has given it to the world in its full dimensions and extent ; nothing less, but nothing more. It is to patent the invention in the broad and general terms that properly express it, and to secure to the party who has made it, the exclusive right, for a limit- ed time, to precisely that discovery which he has imparted to the public, and which, when that limited time expires, the public will enjoy as the fruit of his mind." — lb. 12. " A principle is not patentable. And ' the motive power of the galvanic current, however developed to produce a given result,' can no more be patented than the motive power of steam to propel boats, however applied. The discovery or application of a power in physics can give no monopoly of that power. Electric- ity and steam were long known as powerful agents in nature before the application of either as a motive power. And neither can be exclu- sively appropriated, except through the instru- mentality of mechanical inventions or combina- tions which produce a certain result. ' ' Smith V. Ely et al., 5 McLean, 76.— McLBAif, 1849. 13. " There cannot be a patent for a principle nor for the application of a principle, nor for an effect. Two persons may use the same princi- ple, and produce the same effect by different means without interference or infringement, and each would be entitled to a patent for his own invention." Bain v. Morse, 6 West. L. J. 372.— Cranch, 1849. 14. ' ' An invention in mechanics consists not in the discovery of new principles, but in new combinations of old principles. " Tyler v. Deval, 1 Am. L. T. (N. S.) 248.— McCaleb, 1848. 15. ' ' What is to be protected is not an abstract or isolated principle, but the embodiment of a principle into a machine or manufacture, as de- scribed in the specification ; and it is the inven- tion, in conformity to that embodiment or repre- sentation of its working, which the acts of Con- gress will protect. " Smith V. Downing et al., 1 Pish. P. C. 64. -WooDSURT, 1850. 16. " The impropriety of claiming a patent for the invention or discovery ot a new principle, however important it may be per se, rests on the idea that the exclusive use of the invention for a term of years, is given to the patentee, to re- ward his genius and expense in making his in- vention, and pointing out, in his specification, how it can be used beneficially, and the ma- chine, if it be a machine, easily made by any mechanic for general employment. The patent is, in such cases, and must be, in order to possess validity, not for the principle, but for the mode, machine, or manufacture, to carry out the princi- ple and to reduce it to practice."— 7i. 17. A man may invent and patent an improve- ment upon a prior patented device, but he may not use his device without a license from the prior patentee. — lb. 18. " A principle is not patentable. A princi- PATENTABLE SUBJECT MATTEE. 557 pie, in the abstract, is a fundamental truth ; an original cause ; a motive. These may not be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered, in addition to tliose already Itnown. Through the agency of machinery a new steam-power may be said to have been generated. But no Che can appropriate this power exclusively to himself under the patent laws. The same may be said of electricity, and of any other power in nature which is alike open to all, and may be applied to useful purposes by the use of ma- chinery. ' ' In all such cases the processes used to extract, modify, and concentrate natural agencies consti- tute the invention. The elements of the power exist ; the invention is not in discovering them, but in applying them to useful objects. Wliether the machinery used be novel or consist of a new combination of parts known, the right of the in- ventor is secured against all who use the same mechanical power, or one that shall be substan- tially the same. " A patent is not good for an effect, or for the result of a certain process, as that -would jDro- hibit all other persons from making the same thing by any means whatsoever. This, by creat- ing monopolies, would discourage arts and man- ufactures against the avowed policy of the patent laws. " A new property discovered in matter, when practically applied in the construction of a use- ful article of commerce or manufacture, is pat- entable." Le Roy et al. v. Tatham et al., 14 Howard, 156.— Sdp. Ct. 1851. 19. The patent in suit was for improved lead pipe, and a claim thereof was : " "What we claim as our invention, and desire to secure by letters- patent, is the combination of the following parts above described, to wit, the core and bridge or guide-piece, the chamber, and the die, when used to form pipes of metal, under heat and pressure in the manner set forth, or in any other manner substantially the same. ' ' This was held to cover patentable subject-matter. — lb. 30. The patent in suit was for making lead pipe, and a claim thereof was : " The combina- tion of the following parts above described, to wit, the core and bridge or guide-piece, with the cylinder, the piston, the chamber, and die, when used to form pipes of metal, under heat and pressure, in the manner set forth, or in any other manner substantially the same." Held, to be a claim for a combination of mechanical parts ; otherwise not sustainable. — lb. 31. " There is no doubt that he who has dis- covered some new element or property of mat- ter may secure to himself the ownership of his discovery so soon as he has been able to illus- trate it practically, and to demonstrate its value. His patent in such a case will bo commensurate with the principles which it announces to the world, and may be as broad as the mental con- ception itself. But, then, the mental conception must have been susceptible of embodiment, and must have been, in fact, embodied in some me- chanical device or some process of art. The ab- stract must have been resolved into the concrete. The patent must be for a thing, not for an idea merely." Detmold v. Reeves et al., 4 Am. L. J. 188.— Kane, 1851. 23. " The act of Congress places ' a new and useful art ' among the discoveries it proposes to protect, and assigns it to the first place on the list." French et al. v. Rogers et al., 1 I"ish. P. C. 133.— Kane, 1851. 23. " The party cannot get a patent until he perfects it in some sense of the word — that is, until ho goes on and makes improvements to render it pi'actical and useful — for it is one ele- ment of a machine, necessary to sustain a patent, that it is useful." Colt v. Mass. Arms Co., 1 Fish. P. C. 108.— WooDBTJKT, 1851. 34. ' ' Where a party has discovered a new ap- plication of some property in nature, never be- fore known or in use, by which lie lias produced a new and useful result, the discovery is the sub- ject of a jsatent, independently of any peculiar or new arrangement of machinery for the pur- pose of applying the new property in nature ; and hence the inventor has a right to use any means, old or new, in the application of the new property to produce the new and useful result, to the exclusion of all other means. ' ' Foote v. misby et al., 3 Blatch. 360.— Nblson, 1851. 35. " It must be obvious . . . that there is not only a distinction, but a wide difference between one who merely invents a new method or process by which a well-known fabric, product, or manufacture is produced in a cheaper or better way, and the discovery of a new compound, substance, or manufacture having qualities never found to exist together in any other ma- terial. In the first case the inventor can patent nothing but his process, and not his composition of matter. In the latter both are new and orig- inal, and both patentable — not severally, but as one discovery or invention. " Ooodyear et al. v. Central R. B. of New Jersey, 3 Wall., Jr., 356. — Geieb, 1853. 26. The eighth claim in Morse's patent for his electric telegraph was : " I do not propose to limit myself to the specific machinery described PATENTABLE SUBJECT-MATTER. in the foregoing specification and claims ; the essence of my invention being the use of the motive power of the electric or galvanic current, ■which I call electro-magnetism, however devel- oped, for marking or printing intelligible char- acters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer. ' ' Thereof the court said : "It is impossible to misunder- stand the extent of this claim. He claims the exclusive right to every improvement where the motive power is the electric or galvanic current, and the result is the marking or printing in- telligible characters, signs, or letters at a dis- tance." And the court held the claim invalid. O'Beilly etal. v. Morse et al., 15 Howard, 63. — Stjp. Ct. 1853. 27. " Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it, provided he specifies the means he uses in a manner so clear and exact that any one skilled in the^science to which it appertains can, by us- ing the means he specifies, without any addition or subtraction from them, produce precisely the same result he describes. And if this cannot be done by the means he describes the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means lie specifies to produce the result or eSect he describes and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination, or by the application of discoveries or principles in natural philosophy known or unknown before his invention, or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent if he uses means substantially different from those described." —II. 38. " A process, eo nomine, is not made the subject of a patent in our act of Congress. It is included under the general term 'useful art.' An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of na- ture, or of one substance to another, such modes, methods, or operations are called processes. A new process is usually the result of discovery ; a machine of Invention. ' ' Corning et al. \ . Burden, 15 Howard, 352.— Sdp. Ct. 1853. 29. " The party applying for a patent must be the first and original inventor, and it must also be of such a character as to be capable of appli- cation to the advantage and benefit of mankind. " Ransom et al. v. New York, 1 Fish. P. C. 352.— Hall, 1856. 30. " It is true that a patent cannot be sus- tained for a mere principle. For instance. Sir Isaac Newton's discovery of the principle of gravitation could not be the subject of a patent. But it is equally true, that u, principle may be embodied and applied so as to afford some re- sult of practical utility in the arts and manufac- tures, and that under such circumstances a principle may be the subject of a patent. It is, however, the embodiment and the application of the principle which constitute the grant of the patent. And it has been justly said ' that the principle so embodied and applied, and the principle of such embodiment and application, are essentially distinct ; the former being a truth, of exact science, or a rule of practice, the latter a practice founded upon such a truth, law, or rule.' " Wintermute v. Redington, 1 Fish. P. C. 339.— Wilson, 1856. 31. " A patent cannot be supported by proof that the invention was new to the patentees them- selves, but the evidence must be satisfactory that they were actually the first and original discoverers of the thing patented." Carr v. Rice, 1 Fish. P. C. 198.— Betts, 1856. 32. "A well-known principle or truth of natural science, as well as a newly discovered one, is patentable to the first applicant of it in the useful arts." Henry, O. O., in re, 1 Mac- Arthur's P. C. 467.— Meerick, 1856. 33. An artificial but healthy compound hav- ing the taste and appearance of honey is patent- able. Corbin i6 Martlett, in re, 1 MacArthur's P. C. 521.— MoRSELL, 1857. 34. " Whoever discovers that a certain use- ful result will be produced in any art, machine, or composition of matter, by the use of certain means, is entitled to a patent for it. " " And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination, or by the application of discov- eries or principles in natural philosophy, known or unknown before his invention, or by ma- chinery acting altogether on mechanical princi- ples." Burr et al. v. Cowperthwait, 4 Blatch. 168. — Ingersoll, 1858. 35. " However brilliant the discovery of the new principle may be, to make it useful it must PATENJABLE SUBJECT-MATTER 550 be applied to some practical purpose. Short of this no patent can be granted." Ze Hoy et al. V. Tatham et al., 32 Howard, 132.— Sup. Ct. 1859. 36. ' ' You cannot patent a principle ; you can- not patent a result ; you cannot patent the function of an instrument, but you can patent a machine or manufacture, and when you come to test the question of infringement, the question of principle comes up in this light, What is the mode of operation of the machine you have invented 1 Because if you find in the machine, which is alleged to be an infringe- ment, the same mode of operation, it is substan- tially the same." Singer et al. v. Walmsley, 1 Fish. P. C. 558.— Giles, 1860. 37. "A principle is not patentable, but if you discover a principle, and discover a mode of operation, you have a right to your patent for the mode of carrying the principle into effect ; and if anybody afterward comes alpng and talies your principle and takes your mode of operation, substantially, although he varies the form, he is an infringer." — lb. 38. A claim for "imparting a coexisting movement to two reciprocating <;atch-pi^ces in the operation of trip cut-oil valves, " is in terms for an effect or function, and therefore not pat- entable. Sickles V. Falls Co., 4 Blatch. 508.— Nelson, 1861. 39. " Very little light can be shed on our path by attempting to draw a practical distinction be- tween the legal purport of the words ' discov- ery ' and 'invention.' In its naked, ordinary sense,-^ a discovery is not patentable. A discov- ery of a new principle, force, or law operating, or which can be made to operate, on matter, will not entitle the discoverer to a patent. It is only where the explorer has gone beyond the mere domain of discovery and has laid hold of the new principle, force, or law, and connected it with some particular medium or mechanical contrivance by which, or through which, it acts on the material world, that he can secure the exclusive control of it under the patent laws. He then controls his discovery through the means by which he has brought it into practical action, or their equivalents, and only through them. It is then an invention although it embraces a dis- covery. Sever the force or principle discovered from the means or mechanism through which he has brought it into the domain of invention, and it immediately falls out of that domain and eludes his grasp. It is then a naked discovery and not an invention." Morton v. New York Eye Infirmary, 5 Blatch. 116.— Shipman, 1863. 40. " Discovery . . . may be the soul of an invention, but it cannot be the subject of the exclusive control of the patentee or the patent law until it inhabits a body, no more than can a disembodied spirit be subjected to the control of human laws. ' ' — Ih. 41. The application of the inhalation of the vapor of ether for producing insensibility does not form proper subject-matter for a patent.— n. 43. " The beneficent and imposing character of the discovery cannot change the legal princi- ples upon which the law of patents is founded, or abrogate the rules by which judicial construc- tion must be governed. These principles and rules are fixed and influenced by shades and de- grees of comparative merit. They secure to the inventor a monopoly in the manufacture, use, and sale of very humble contrivances of limited usefulness, the fruits of indifferent skill and trifling ingenuity, as well as those grander prod- ucts of the genius which confer renown upon himself and extensive and lasting benefits upon society. But they are inadequate to the protec- tion of every discovery by securing its exclusive control to the explorer to whose eye it may be first disclosed. A discovery may be brilliant and useful and not patentable. No matter through what long, solitary vigils, or by what importunate efforts the secret may have been wrung from the bosom of nature, or to whatuse^ ful purpose it jnay be applied, something more is necessary. The new force or principle brought to light must be embodied and set to work, and can be patented only in connection or combina- tion with the means by which, or the medium through which, it operates. Neither the natural functions of an animal upon which or througli which it may be designed to operate, nor any of the useful purposes to which it may be applied, can form any essential parts of the combination, however they may illustrate and establish its usefulness. ' '• — IT). 43. "It is well settled, and needs no citation of authorities to prove it, that the discovery of a new and abstract principle in the science of me- chanics cannot be the subject of a patent." Tilghman Y. Werk, 1 Bond, 511. — Lbavitt, 1863. 44. ' ' Mere discovery of an improvement does not constitute it the subject-matter of a patent, although the ideas which it involves may be new ; but the new set of ideas, in order to be- come patentable, must be embodied into work- ing machinery and adapted to practical use." Wiite et al. v. Allen, 3 Clifford, 224.— Clip- ford, 1868. 45. " The intellectual conception of a possible 560 PATENTABLE SUBJECT-MATTBK. process, without a potential working of it out, is not patentable. If an inventor merely con- ceives a meclianicai process in his mind, and then sets to work to construct a machine to work that process, and works it out in no other way, and the machine fails to work successfully, then his claim as the inventor of a process is as groundless as his claim as the inventor of a ma- chine." Union M'fg Co. y. Lounsbury et al., 3 Fish. P. C. 389.— Shipman, 1863. 46. "The law requires that the specification ' should set forth the principle and the several modes in which he (the inventor) has contemplat- ed the application of that principle or character by which it may be distinguished from other in- ventions, and shall particularly point out the part, improvement, or combination which he claims as his own invention or discovery. ' We find here no authority to grant a patent for a ' princi- ple, ' or a ' mode of operation, ' or an idea, or any other abstraction. A machine is a concrete thing, consisting of parts, or of certain devices and combinations of devices. The principle of a machine is properly defined to be its ' mode of operation,' or that peculiar combination of de- vices which distinguish it from other machines. A machine is not a principle or an idea. ' ' Burr V. Duryee, 1 Wallace, 531.— Sdp. Ct. 1863. 47. " Because the law requires a patentee to explain the mode of operation of his peculiar machine, which distinguishes it. from others, it does not authorize a patent for a ' mode of oper- ation as exhibited in a machine. ' "— lb. 48. " Inventions pertaining to machines may . . . be divided into four classes : 1. Where the invention embraces the entire machine. . . . Such inventions are seldom made, but when made and duly patented any person is an in- fringer who, without license, makes or uses any portion of the machine. Under such a patent, the patentee holds the exclusive right to make and use, and to vend to others to be used, the entire machine ; and if another, without license, makes, uses, or vends any portion of it, he in- vades the right of the patentee. 2. Second class of inventions referred to are those which embrace one or more elements of a machine, but not the entire machine, as the coulter of a plough or the divider of a reaping- machine. In patents of that class any person may make, use, or vend all other parts of the machine, and he may employ a coulter or divider in the machines mentioned, provided it be sub- stantially diilerent from that embraced in the patent. 3. Third class of machines to be mentioned are those which embrace both a new element and a new combination of elements previously used and well known. Property of the patentee in such a case consists in the new element and in the new combination. No one can lawfully make, use, or vend a machine containing such new element or such new combinations. They may make, use, or vend tlie machine without the patented improvements, if it is capable of such use, but they cannot use either of those improvements without making themselves liable as infringers. 4. Fourth class of machines to be mentioned are those where all the elements of the machine are old, and where the invention consists in a new combination of those elements whereby a new and useful result is obtained. Most of the modern inventions are of this latter class, and many of them are of great utility and value. ... In this class the invention consists solely in the new combination, and the rule is, that the property of an inventor, if duly secured by let- ters-patent, is in all cases exactly commensurate with his invention. Such an invention, how- ever, is but an improvement on an old machine, and, consequently, the patentee cannot treat an- other person as an infringer who has also im- proved the original machine by the use of a sub- stantially different combination, although the machine may produce the same result. ' ' Union Sugar Refinery v. Matthiessen, 3 Fish. P. C. 600. — Clifford, 1865. 49. Doubted, whether an improvement in a jail is patentable subject-matter. Jacobs v. Baker, 7 Wall. 295.— Sup. Ct. 1868. 50. " Patentable subjects, as defined by the patent law [act of 1836, Section 6], are " any new and useful art, machine, manufacture, or com- position of matter, or any new and useful im- provement on any art, machine, manufacture, or composition of matter.' A machine can be new and the product or manufacture proceed- ing from it may be old. In that case the former would be patentable and the latter not. The machine may be substantially old and the prod- uct new. In that event the latter and not the former would be patentable. Both may be new or both may be old. In the former case, both would be patentable ; in the latter, neither. The same remarks apply to processes and tlieir re- sults. Patentability may exist as to either, neither, or both, according to the fact of novelty or the opposite. The patentability, or the issu- ing of a patent as to one, in no wise affects the rights of the inventor or discoverer in respect to the other. They are wholly disconnected and independent facts. " Rubber Co. y. Ooodyear,9 Wall. 788.— Sup. Ct. 1869. PATENTABLE SUBJECT-MATTER 561 51. " It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, not for the result or effect itself." Piper V. Brown et al., 1 Holmes, 20. — Shbpley, 1870. 53. The claim in a patent for a method of in- creasing the capacity of oil wells was : " The above-described method of increasing the pro- ductiveness of oil wells by causing an explosion of gunpowder, or its equivalent, substantially as described above. ' ' Defendant contended that the claim vras void as being for a principle, but the court held otherwise and said that the claim was for " the emijloyment of specified means, or their equivalents, for the accomplishment of a desired end— ;-a novel adaptation of things, not themselves claimed as novel, to a novel and beneficial use." Roberts v. Dickey, 4l Brews. 260.— Strong, 1871. 53. " It is not to be doubted that a novel proc- ess or method of operation, that amounts to a successful application of known things to a prac- tical use, is patentable as an art." — lb. 54. ' ' Undeniably the mere function of a ma- chine is not a patentable subject ; but it is just as clear that a mechanical device, adapted to perform specific functions, is, whether its oper- ative efficiency depends upon its combination with other mechanism or not. The novelty and utility of such device are the tests of its patent- able merit. Its possession of these qualities en- titles its inventor to the protection of the patent laws, and this can be as effectually secured by making it the subject of a separate claim In a patent for an auxiliary combination also, as by making it the sole subject of a distinct patent." Parham v. Am. B. 0. & Sewing-Macli. Go. et al., 1 Pa. Leg. G. Rep. 145.— McKehnan, 1871. 55. "A patent may be good for a product, although no patent has been obtained for the machine or process by which it is produced. So a patent may be good for a product, even though the inventor has received a patent for the ma- chine or process, which by reason of imperfec- tion in the specification and claim, fails to cover the whole invention. Where the patent for a product is accompanied by a specification which does, in fact, describe the machine and process, so as to fully satisfy the requirements of the law, and enable any one of proper skill in the arts to produce the article patented, by the means de- scribed, the patent for the product may be good, even though the same specification, annexed to a patent for the machine, might not fully secure the patentee against the use of his actual inven- tion, because the claim was narrower than the invention, or because the claim was too broad, or was otherwise imperfect and ineffectual. In such case the patent for the product might pos- sibly be infringed, although no action could be maintained based on the patent for the machine. ' ' Waterbury Brass Co. v. E. Miller et al., 9 Blatch. 77.— Woodruff, 1871. 56. The claim in complainants' patent for a machine for crushing and washing sand was : " 1. The introduction of a stream or flow of water into the crushing-pan of a revolving sand, sand-rock, or sandstone crusher, to aid the crusher or crushers in disintegrating the rock, and to cleanse and discharge the pulverized sand, substantially in the manner and for the purposes hereinbefore set forth." Thereof the. court said : " By the words of the specification the patentee purposes to employ only the co- operative agency of water, and the patent must therefore be construed to claim, not its abstract functions, but the special mode in which, in connecting with the mechanical devices de- scribed, its power is made available. In this view of the patent, the objection that the claim is for a subject not patentable, is clearly un- founded." Smith et al. v. Frazer et al., 3 Pittsb. 397.— McKennan, 1873. 57. A patent cannot be granted for a principle or an idea, or for any abstraction whatever. . . . But when the idea is applied to a material thing, so as to produce a new and useful effect or re- sult, it ceases to be abstract, and becomes a proper subject to be covered by a patent." McComb et al. v. Brodie, 1 Woods, 153.— Woods, 1871. 58. " A result . . . is not, jser «e, patentable. " Marsh v. Dodge & Stevenson M'f'g Go., 6 Fish. P. C. 562.— WooDKtiFF, 1873. 59. Terms broad enough to cover any and every mode or means by which certain specified advantages can be secured, are too broad to be sustained. — lb. 60. " It is competent for the Commissioner to grant a patent for the product and one for the process." Jones et al. v. Sewall, 3 Clifford, 563. — Clifford, 1873. 61. " Improvements consisting of separate and distinct parts may, in certain cases, be se- cured by separate and distinct patents, but no more than one patent can be granted for the same invention." — lb. 63. " Doubtless an invention may be good though the subject of it consists in the discovery of some principle of science or property of mat- ter never before known or used, by which some new and useful result is obtained, and such an invention or discovery may be the subject of a 56i PATENTABLE SUBJECT-MATTEK. valid patent without including in the claim any new arrangement of machinery to accomplish the object, provided the inventor describes, as required by the patent law, the method, proc- ess, or the means of applying the invention to practical use and of obtaining the described new and useful result." MitcheU v. Tilghman, 19 "Wall. 287.— Stjp. Ct> 1873. 63. " A patentee who has invented a new process in the arts, whereby an article of manu- facture is produced, new in kind and not before known, may separately claim and patent both the art and the manufacture. He cannot prop- erly combine them in one claim. Differing in that respect from the English law, which allows a patent for ' any number of new manufactures ' (a term which includes process and product), our law distinguishes between a patent for an art and a patent for a manufacture." Merrill v. Teomans et al., 1 Holmes, 331.— Shbplev, 1874. 64. " Persons who invent or discover new and useful manufacture are as much entitled to patents as those who invent or discover new and useful arts, machinery, or compositions of mat- ter." Milligan & Higgins Glue Co. v. Upton, 4 Cliff. 337.— Clippoud, 1874. 65. "A patentee who has invented a process in the arts, whereby an article of manufacture is produced, new in kind, and not before known, may separately claim and patent both the art and the manufacture, if both are new and use- ful in the sense of the patent law ; and, it is doubtless true, if the thing be new, in and of it- self, it is patentable as a new manufacture, and that the patent would be infringed by the un- licensed construction or use of the product, though produced by other means than those de- scribed in the specifications of the patent. In- ventions of the kind are rare, as it much more frequently happens that the process is insepa- rable from the product, so that the patentee can- not claim the product, if produced by hand tools, or by other means substantially different from those employed by the inventor or discoverer. Patentees, in the former case, may claim the new product without qualification, but, in the latter, they should claim the product only, made by the described means or their equivalents, as the process inheres in the manufacture, and con- stitutes an element of the invention. Neither claim, however, would be valid unless support- ed by proof of invention or discovery." — lb. 66. " It is the settled law that a mere princi- ple, or result, or mode of operation, is not pat- entable." Union Paper Collar Co. v. White, 2 Bann. & Ard. 60.— McKennan, 1875. 67. "Patentable inventions peilaining to ma- chines may be divided into four classes : First, entire machines, as a car for a railway, or a sew- ing-machine ; second, separate devices of a ma- chine, as the coulter of a plough, or the divider of a reaping-machine ; third, new devices of a machine in combination with old elements, all embraced in one claim, or with separate claims for what is new, together with a claim for the new combination of all the elements ; fourth, de- vices or elements of a machine in combination, where all the devices or elements are old. ' ' San- ford y. Merrimae Hat Co., 4 Cliff. 407.— Clip- ford, 1876. 68. " One invention may include within it many others, and each and all may be valid at the same time. This only consequence follows, that each inventor is precluded from using in- ventions made and patented prior to his own ex- cept by license from the owners thereof. His invention and his patent are equally entitled to protection from infringement as if they were in- dependent of any connection with them. ' ' Coeh- rane et al. v. Beener et al., 94 U. S. 780. — Scp. Ct. 1876. 69. " There can be no patent for a principle ; but for a principle so far embodied and connect- ed with corporeal substances as to be in a con- dition to act, and to produce effects, in any trade, mystery, or manual occupation, there may be a patent." Andrews et al. -v. Carman, Id Blatch. 307.-BBNBDICT, 1876. 70. There may be patented products in which the process of making so inheres that the de- scribed product can only be made by the de- scribed process, and in that case the process is a substantive part of the invention. Goodyear Dental Vulcanite Co. v. Davis, 3 Bann. & Ard. 115.— Sheplet, 1877. 71. " An imperfect and incomplete invention, resting in mere theory, or in intellectual notion, or in uncertain experiments, and not actually reduced to practice and embodied in some dis- tinct machinery, apparatus, manufacture, or composition of matter, is not, and, indeed, cannot be, patentable under our patent acts, since it is impossible, under such cu'cumstances, to com- ply with the fundamental requisites of those acts. ' ' Draper v. Potomska Mills Corporation, 3 Bann. & Ard. 214.— Sheplet, 1878. 72. " Inventors of a new and useful composi- tion of matter, duly secured by letters-patent, are entitled to the same protection for the property as the owners of a patent for a new and useful art, machine, or manufacture are entitled to re- ceive, and the rules and regulations in suits for infringement are the same in all material re- PATENTABLE SUBJECT-MATTEE. 563 speots." Cahill \. Brown, 3 Bann. & Ard. 580. — CliIFFOBD, 1878. 73. Bronzing iron in a new way makes it a new article of manufacture within the meaning of the patent law. Tucker v. Burditt et al., 4 Bann. & Ard. 569.— Lowell, 1879. 74. An " artificial alizarine' ' is patentable as a new article of manufacture. Badische Anilin <& Soda Fabrik v. Cummins, 4 Bann. & Ard. 489. — Lowell, 1879. 75. Alizarine was a natural dyestutf found in the root of the madder plant. Anthracine was a waste product of coal tar. Two joint invent- ors devised a method of producing chemically a substance having useful qualities of the said alizarine and it was held ijatentable. Badiselie Anilin & Soda Fabrik v. Oochrane et al., 16 Blatch. 155.— "Wheeler, 1879. 76. " The statute entitles an inventor of any new and useful art, machine, manufacture, or composition of matter to a patent for it ; . . . these terms in the statute are not understood to be placed there as stools betwixt which inventors may fall to the ground, but to cover the whole range of useful invention, to every piece of which some one of them, and to many, more than one of them will apply. ' ' — lb. 77. " Separate patents for severable parts of the same invention may be granted, although the ^whole invention is fully described in each of them to explain the purpose and mode of opera- tion of the parts covered by the claims in such patents." McMillin et al. v. Rees et al., 1 Fed. Sep. 733.— McKbnnan, 1880. 78. " The . connection or combination of a patented device or improvement with other de- vices may be the subject of a valid subsequent patent." — lb. 79. A claim cannot cover every means of ac- complishing a proposed result. — lb. 80. Defendant may have a~patent for a device to which complainant's patented device is sim- ply an additional improvement. Day v. Com- bination Bubber Co., 3 Fed. Eep. 570. — "Wheel- er, 1880. 81. By the court: " The plaintiff's invention is a book with a page or pages spaced for each bond and its coupons — of any series of coupon bonds— and with the spaces numbered and des- ignated to show what bonds and coupons they are for, while any of them are outstanding, and for receiving them for safe keeping as vouchers or memoranda when any of them are taken up or paid." Such abook is proper subject-matter for a patent. Munson v. Mayor of N. K, 18 Blatch. 837.— "Wheeler, 1880. , 83. " Invention and infringement could con- ; sist in joints of a particular form for parts of cans, as well pro tanto, as for the whole." Banker v. Bostwick et al., 3 Fed. Rep. 517. — "Wheeler, 1880. 83. By the court : " The first claim is not a claim to any mechanism ; but, if not a claim to a function, is a claim to a mode of operation. It amounts to a claim to inserting a stopper through the mouth of a bottle, and then pressing it upward till it is closed tight against a seat in- side. It seems to be intended to cover any form of stopper, and any form of mouth, and any means of pressure, and any arrangement of seat. As a claim thus broad it cannot be sustained. It must be limited to the mechanism described, having the mode of operation described. " Mat- thewa V. Schxmeberger et al., 18 Blatch. 357. — Blatchfobd, 1880. 84. An " arrangement is none the less an in- vention because it brings into operation the laws of nature." Hammerschlag v. Scamoni, 7 Fed. Rep. 584.— Blatchpord, 1881. 85. A claim to a principle, irrespective of the means used, cannot be sustained. Palmer v. Catling Oun Co., 19 Blatch. 393. — Shipman, 1881. 86. " That a patent can be granted for a proc- ess there can be no doubt. The patent law is not confined to new machines and new compo • sitions of matter, but extends to any new and useful art or manufacture. A manufacturing process is clearly an art within the meaning of the law." Tilghman v. Proctor et al., 103 V. S. 707.— Sup. Ct. 1881. 87. " A machine is a thing. A process is an art or mode of acting. The one is visible to the eye — an object of perpetual observation. The other is a conception of the mind, seen only by its effects when being executed or performed. Either may be the means of producing a useful result. The mixture of certain substances to- gether, or the heating of a substance to a certain temperature, is a process. If the mode of doing it, or the apparatus in or by which it may be done, is suificiently obvious to suggest itself to a person skilled in the particular art, it is enough in the patent to point out the process to be per- formed without giving supererogatory directions as to the apparatus or method to be employed. If the mode of applying the process is not ob- vious, then a description of a particular mode by which it may be applied is sufficient. There is, then, a description of the process and of one practical mode in which it may be applied. Per- haps the process is susceptible of being applied in many modes and by the use of many forms of apparatus. The inventor is not bound to de- 564 PATENTABLE SUBJECT-MATTER. scribe them all in order to secure himself the ex- clusive right to the process if he is really its in- ventor or discoverer." — lb. 88. "A patent for a device of minor conse- quence" . . " is just as much entitled to pro- tection as though it was for the most important piece of machinery ever devised. ' ' Shannon v. Jones Stationery & Printing ^Co., 10 Bissell, 498. — Blodgbtt, 1881. 89. One claim of the patent in suit covered one function of a device, and another claim an- other function of the same device, Said the court : " I cannot see how these claims for the result or function of the joint can be deemed valid. It is the mechanism which is the .subject- matter of the patent, and not the result of the mechanism." Pattee et al. v. Moline Plough Go. et al., 10' Bissell, 377.-Blodgbtt, 1881. 90. By the court : " If he was the author of any other invention than that which he specially describes and claims, though he might have asked to have it patented at the same time and. in the same patent, yet if he has not done so, and after- ward desires to secure it, he is bound to make a new and distinct application for that purpose, and make It the subject of a new and different' patent." Jamesy. Campbell etal., 104 TJ. S. 356. — S0P. Ct. 1881. 91. Complainants had an expired patent for a machine for iriaking shoes, and later patents for the product of such machines, and the process of making such products. Held, that after the machine had been made, the process and product did not present patentable subject-matter. Mc- Kay etal. V. Jackmav, SOBlatch. 466. — Wheel- er, 1883. 92. By the court : " The plaintiff's present position — ' that this process covers all methods of making waxed paper by machinqjy, and, there- fore, whether defendants carry on the making of waxed paper by machinery by the complain- ant's jjarticular method, or by a new mode de- vised by themselves, and which dispenses with some of the steps used by plaintiff in his par- ticular mode, makes no difference whatever as regards infringement' — cannot be adopted." Hammersclilag v. Garrett et al., 21 O. G. 1199.-BnTLEn, 1882. 93. By the court : " There can be no patent for a mere principle. The discoverer of a nat- ural force or a scientific fact cannot have a pat- ent for that ; but if he invents for the first time a process by which a certain effect of one of the forces of nature is made useful to mankind, and fully describes and claims that process, and also describes a mode or apparatus by which it may be usefully applied, he is, within the meaning and the very words of the patent law, ' a person who has invented or discovered a new and use- ful art,' and he is entitled to a patent for the process of which he is tlie first inventor, and is not restricted to the particular form of mechan- ism or apparatus by which he carries out that process." . . . "The opinion in Spencer's case clearly points out that Bell discovered a new art — that of transmitting speech by electricity — and has a right to hold the broadest claim for it which can be permitted in any case, and ' the invention is nothing less than the transfer to a wire of electrical vibrations like those which a sound has produced in the air,' and that his pat- ent, while not covering the abstract principle, without regard to means of transmitting speech by electricity, yet is not limited to a particular form of apparatus, but includes the process or method [using the two words as equivalent], the essential elements of which are the production of what the patent calls ' undulatory vibrations of electricity to compound with those of the air, ' and transmitting them to a receiving instrument capable of echoing therein. The evidence in this case clearly shows that Bell discovered that articulate sounds could be transmitted by undu- latory vibrations of electricity, and invented the art or process of transmitting such sounds by means of such vibrations. If that art or process is [as the witnesses called by the defendant say it is] the only way by which speech can be transmitted by electricity, that fact does not lessen the merit of his invention or the protec- tion which the law will give toit. " Am. Bell Tel. Co. V. Dolhear et al., 23 O. G. 535.— Sup. Ct. 1883. 94. By the court: " Few legal rules have been oftener misunderstood than the maxim that you cannot patent a principle. But the confusion on the subject has been so effectually cleared up by the recent judgment of the Supreme Court, delivered by Mr. Justice Bradley, in Tilghman V. Proator, that it will be sufficient for the pur- poses of the case to state the conclusions there announced. There can be no patent for a principle. The discoverer of a natural force or a scientific fact cannot have a patent for that. But if he invents, for the first time, a process by which a certain effect of the forces of nature is made useful to mankind, and fully describes and claims that process, and also describes a mode or apparatus by which it may be usefully ap- plied, he is, within the meaning and very words of the patent law ' a person who has invented or discovered any new and useful art ;' and he is entitled to a patent for the process of which ho is the first inventor, and is not restricted to the PATENTABLE SXJBJECT-MATTEK. 565, particular form of mechanism or apparatus by which he carries out that process. Another person, who afterward invents an improved form of the apparatus, embodying the same process, may, indeed, obtain a patent for his improvement, but he has no right to use the process, in his own or any other form of appa- ratus, without the consent of the first inventor of the process. " — lb. 95. The claim in issue was: " Tlie electro- plating of metals with a coating of compact, co- herent, tenacious, flexible nickel, of sufficient thickness to protect the metal upon which the deposit is made from the action of corrosive agents with which the article may be brought in contact." Claim sustained and held to cover the product irrespective of the process used. United Nickel Co. v. Pendleton, 21 Blatch. 236. — Blatchfoed, 1883. , 96. By the court-: " The argument that a ma- chine must be automatic in order to be patent- able is not sound. A piano is not automatic, nor is any tool or implement intended for use by hand, but improvements in any such tool used in an art or industry are patentable. ' ' Coupe et al. V. Weatherliead etal., 23 O. G. 1937.— Low- ell, 1883. 97. "A process is patentable provided that it is new and useful. By process is meant the ap- plication or operation of some element or power of nature to one subject or another. As exam- ples of patentable processes, the art of dyeing small ores and the like may be mentioned. In this and in other similar cases the merit of the invention consisted not in the discovery of any new law of nature, or principles of science or natural philosophy, but in the application of old and well-known principles to new and useful purposes." Boyd v. Cherry, 4 McCrary, 70. — McCkary, 1883. 98. A claim to a mechanism which covers the method by which the mechanism works, inde- pendently of the means used, is a claim to a principle, and void. Tale Lock M'fg Go. et al. V. Berksliire Nat'l Banket al., 17 Fed. Rep. 531. — Lowell, 1883. 99. By the court : " The fifth claim is merely for feeding the blanks under the table which supports the gun-box, instead of over it. The machinery described, some of which is the sub- ject of other claims, does feed the blanks under the fable. . The claim is merely for that function or mode of operation of that machinery. As such, this function or mode of operation does not seem to be patehtable apart from that ma- chinery." OMld V. B. & F. n. Iron Works, 19 Fed. Rep. 358.— Lowell, 1884 100. By the court : " No principle is better settled than that a mere abstract idea is not the subject of a patent, but that principle has little application here, for the reason that the inventor has put his idea into tangible shape and given it substance." Worswick M'fg Go. etal. v. City of Buffalo et al.) 33 Blatch. 157.--Coxb, 1884. 101. " An inventor cannot patent the princi- ple of sewing buttons to a fabric automatically, any more than the idea of nailing boxes by ma- chinery, when previously nails had been driven by hand, could be patented. He could only patent the particular contrivance to make the idea practically useful as the Supreme Court held it in the nail case. " Nor in that case, where there is mechanism consisting of three groups of instrumentalities, could he cover every other button-sewing machine adopting the use of three groups of instrumentalities in combina tion, without regard to the specific mechanism employed. His " patent secures to him the ex- clusive right to the use of the mechanism de- scribed therein. It does not give him the ex- clusive right to a principle, or to groups of in- strumentalities independent of the mechanism employed." Morley Sewing-Machine Co. et al. V. Lancaster, 33 Fed. Rep. 344. —Colt, 1884. 103. " The patent law recognizes as patent- able an improvement in any art or mechanical construction or combination which is useful to the public, and not before known. To be pat- entable, a thing must not only be new and use- ful, but must amount to an invention or discov- ery." May V. County of Fan du Lac, 37 Fed. Rep. 691.— Dyer, 1886. 103. " That a process may be patentable, irre- spective of the particular form of instrumentali- ties used, cannot be disputed." Eastern Paper Bag Co. et al. v. Standard Paper Bag Co. et al. , 30 Fed. Rep. 63.— Colt, 1887. 104. " A patent may be valid for a process, and another be"valid for means of carrying it on." Phillips v. Kochert et al., 31 Fed. Rep. 39._Wheblbr, 1887. 105. ■' The use of one old material in place of another, when the substituted material performs no new function and is an improvement because it is more durable, does not appear to amount to patentable invention." J. L. Mott Iron Works V. Gassidy et al., 31 Fed. Rep. 47. — Wheblbr, 1887. 106. " Under the patent laws, a process may be patented as well as a machine or device ; and when so patented gives the inventor the benefit thereof in the same way as a machine or device, and equally protects him from infringers during the life of his patent." Byerly v. Cleveland 56G PLEADING.. Linseed Oil Works, 31 Fed. Rep. 73. — Wblkeb, 1887. 107. Bell was tlie disco¥erer of the new art of transmitting speech by electricity, and his claim should receive the broadest interpretation so as to secure to the inventor not the abstract right of sending sounds by telegraph without regard to means, but all means and processes described which are essential to the application of his principle. Am. Bell Tel. Oo. v. Olobe Tel. Co. et al., 81 Fed. Rep. 739.— "Wallace, 1887. 108. A process claim which is merely a claim to an inevitable function of a machine is not pat- entable. OMcopee Folding Box Co. v. Sogers, 32 Fed. Rep. 695.— Wallace, 1887. PLEADING. "Pleading" in the Patent Acts. Act approved April 10th, 1790. Section 6. And be it further enacted. That in all actions to be brought by such patentee or patentees, his, her, or their executors, adminis- trators, or assigns, for any penalty incurred by virtue of this act, the said patents or specifica- tions shall be prima facie evidence that the said patentee or patentees was or were the first and true inventor or inventors, discoverer or discov- erers, of the thing so- specified ; but that, never- theless, the defendant or defendants may plead the general issue, and give this act, and any special matter whereof notice in writing shall have been given to the plaintiff or his attorney, thirty days before the trial, in evideiice, tending to prove that the specification filed by the plain- tiff does not contain the whole of the truth con- cerning his invention or discovery ; or that it contains more than is necessary to produce the effect described ; and if the concealment of part., or the addition of more than is necessary, shall appear to have been intended tomslead, or shall actually mislead the public, so as the effect de- scribed cannot be produced by the means speci- fied, then, and in such cases, the verdict and judgment shall be for the defendant. [Repealed February 31st, 1793,] Act approved February 31st, 1793. Sec. 6. Proxdded alwayn, and be itfurtlier en- acted. That the defendant in such action shall be permitted to plead the general issue, and give this act, and any special matter, of which notice in writing may have been given to the plaintiff or his attorney, thirty days before trial, in evidence, tending to prove that the specification filed by the plaintiff does not contain the whole truth relative to his discovery, or that it contains more than is necessary to produce the desired effect, which concealment or addition shall fully appear to have been made for the purpose of de- ceiving the public, or that the thing thus secured by patent was not originally discovered by the patentee, but had been used, or had been de- scribed in some public work anterior to the supposed discovery of the patentee, or that he had surreptitiously obtained a patent for the dis- covery of another person ; in either of which cases judgmentshall.be rendered for the defend- ant, with costs, and the patent shall be declared void. [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 15. ATid he it further enacted. That the defendant in any such action shall be permitted to plead the general issue, and to give this act and any special matter in evidence, of which notice in writing may have been given to the plaintiff or his attorney, thirty days before trial, tending to prove that the description and speci- fication filed by the plaintiff does not contain the whole truth relative to his invention or dis- covery, or that it contains more than is neces- sary; to produce the described effect ; which con- cealment or addition shall fully appear to have been made for the purpose of deceiving the pub- lic, or that the patentee was not the original and first inventor or discoverer of the thing patented, or of a substantial and material part thereof claimed as new, or that it had been described in some public work anterior to the supposed dis- covery thereof by the patentee, or had been in public use or on sale with the consent and allow- ance of the patentee before his application for a patent, or that he had surreptitiously or unjustly obtained the patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting aud per- fecting the same ; or that the patentee, if an alien at the time the patent was granted, had failed or neglected, for the space of eighteen months from the date of the patent, to put and continue on sale to the public, on reasonable terms, tlie invention or discovery for which the patent issued ; in either of which cases judgment shall be rendered for the defendant with costs. And whenever the defendant relies in his de- fence on the fact of a previous invention, knowledge, or the use of the thing patented, he shall state, in his notice of special matter, the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used : Promded, Iwweter, That whenever it shall satisfactorily appear that the patentee, at the time of making his ap- PLEADING. 567 plication for the patent, believed himself to be the first inventor or discoverer of the thing pat- ented, the same shall not be held to be void on ftccount of the invention or discovery or any part thereof having been before Isnown or used in any foreign country, it not appearing that the same or any substantial part thereof had be- fore been patented or described in any printed publication. And provided also, That whenever the plaintiff shall fail to sustain his action on the ground that, in his specification of claim is em- braced more than that of which he was the first inventor, if it shall appear that the defendant had used or violated any part of the Invention justly and truly specified and claimed as new, it shall be in the power of the court to adjudge and award as to costs, as may appear to be just and equitable. [Repealed July 8th, 1870.] Act approved July 8th, 1870. Skc. 61. And be it fuHJier enacted, That in any action for infringement the defendant may plead the general issue, and having given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one or more of the following special matters : First. That for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office, was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect ; or. Second. That he had surreptitiously or un- justly obtained the patent for that which was in fact invented by another, who was using reason- able diligence in adapting and perfecting the same ; or, Third. That it had been patented or described in some printed publication prior to his supposed invention or discovery thereof ; or. Fourth. That he was not the original and first inventor or discoverer of any material and sub- stantial part of the thing patented ; or, Fifth. That it had been in public use or on sale in this country for more than two years be- fore his application for a patent, or had been abandoned to the public. And in notices as to proof of previous inven- tion, knowledge, or use of the thing patented, the defendant shall state the names of pat- entees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and when and by wliom it had been used ; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defences may be pleaded in any suit in equity for relief against an alleged infringement ; and proofs of the same may be given upon like notice in the answer of the defendant. [Repealed June 33d, 1874.] Act approved June 33d, 1874. Sec. 4930. In any action for infringement the defendant may plead the general issue, and hav- ing given notice in writing to the plaintiff or his attorney, thirty days before, may prove on trial any one "or more of the following special mat- ters : First. That for the purpose of deceiving the public the description and specification filed t^ the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect ; or. Second. That he had surreptitiously or un- justly obtained the patent for that which was in fact invented by another, who was using reason- able diligence in adapting and perfecting the same ; or, Third. That it had been patented or described in some printed publication prior to his sup- posed invention or discovery thereof ; or. Fourth. That he was not the original and first inventor or discoverer of any matei'ial or sub- stantial part of the thing patented ; or. Fifth. That it had been in public use or on sale in this country for more than two years be- fore his application for a patent, or had been abandonee! to the public. And in notices as to proof of previous inven- tion, knowledge, or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when grant- ed, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and when and by whom it had been used ; and if any one or more of the special matters alleged shall he found for the defendant, judgment shall be rendered for him with costs. And the like defences may be pleaded in any suit in equity for relief against an alleged infringement ; and proofs of the same may be given upon like notice in the answer of the* defendant, and with the like effect. Cases. 1. " Contra formam, etc., is a matter of form in a declaration. The omission thereof does not warrant non-suit. " Tryon v. White, 1 Peters's C. 0. 96. - Washington, 1815. 3. It is sufficient to state the substance of the grant in a declaration ; but, if the declaration 668 PLEADING. professes to give the tenor, the slightest vari- ance is fatal.— /J. 3. In pleading prior use, the special facts [names of prior users and place of use] need not he set out, either in special pleading or under the general issue vpith notice. Evans v. Eremer, 1 Peters's C. C. 315.— "Washington, 1816. 4. In pleadiiig prior use it is not necessary to specify the user and the place of use. (Section 6, act of 1793.) Ukam v. Baton, 1 Peters's C. C. 332.— Washington, 1816. 5. Whether the objection of want of utility may he put in evidence under the general issue, may well he douhted. Oray ei al. v. James et al, 1 Peters's C. 0. 394.— Washington, 1817. 6. The declaration need not set out the sub- stance of the specification. Cfray et al. v. James et al, 1 Peters's C. C. 476.— Washington, 1817. 7. The declaration need not state the taking of the steps preliminary to the granting of the patent, but it must aver the issue of the patent to the patentee, signed and sealed as the law di- rects. Cutting et al. v. Myers, 4 Washington, 220.— Washingtot^, 1818. 8. The declaration need not set out the speci- fication either verbatim or substantially. A mention of the title used in the patent is suffi- cient.^ — n>. 9. The allegation of Infringement may be in general terms. — lb. 10. " It is not believed that a plea would be defective which did not state the mills in which the machinery alleged to be previously used was placed." Evans v. Eaton, 8 Wheatou, 454. — Sup. Ct. 1818. 11. Unde'' the general issue, without notice of special matter, defendant may give the patent act in evidence, also alienage, also a license, also that the patent has no specification, also that the specification is insufficient in description, also that the patent covers more than the invention, also that the invention is not defined and pointed out, also that the suggestions of the petition are not recited in the patent ; but not the defences enumerated in Section 6 of the act (referring to act of February 31st, 1793). Kneass v. Schuyl- kill Bank, 4 Wash. 9.— Wash. 1830. 13. An allegation of prior use in the United States does not warrant evidence of prior use abroad. Dixon v. Meyer, 4 Wash. 68.— Wash. 1831. 13. The bill must be accompanied by affidavits of the complainant's present belief that the pat- entee was the original inventor. Sullivan v. BedfieUetal., 1 Paine, 441.— Thompson, 1825. 14. On bill filed and injunction moved for, complainant was required to make a special affi- davit as to his allegations, that he believed him- self the first inventor, and that there had been no prior use or publication. Provisional in juno- tion granted, and issue at law directed. Sogers V. Abbott, 4 Wash. 514.— Wash. 1835. 15. If the declaration fail to state the record of an assignment to the plaintiff, the verdict of the jury for the plaintiff cures the defect. Bob- son V. Campbell, 1 Sum. 319. — Stokt, 1833. 16. The plaintiff, in an action on a contract for royalties, averred that he sold to the defend- ant the right of making and vending a stove for which he claimed a patent, but did not aver that he obtained the patent or had the exclusive right. Held, that the objection would have been fatal on demurrer but was cured by verdict, Stanley v. Whipple, 2 McLean, 35.— McLean, 1839. 17. Where a defendant would show prior use in evidence, it must in pleading set up the wit- nesses having knowledge. Philadelphia & Tren- ton Railroad Co. v. Stimpson, 14 Peters's C. C. 448.— Sup. Ct. 1840. 18. The court cannot consider defences not raised by the pleadings. Wyeth et al. v. StoTie et al., ISiovy, 373.— Story, 1840. 19. The court will notice an objection appear- ing upon the face of the bill though not other- wise raised in the pleadings. — lb. 30. In an action to recover money due for an interest in a patent right, a plea which admits existence of the patent but denies its validity is bad. Bennett v. Martin, 6 Mo. 460. —Tomp- kins, 1840. 31. A charge in a bill of complaint requiring the defendants to answer it "as to their knowl- edge, remembrance, information, and belief." must be so answered ; it is not sufficient for the defendants to answer as to their knowledge ; they must answer also as to their information and belief. Parks v. Byamet al., 1 Story, 296. — ■ Stobt, 1840. 33. Complainants' patentee, in his patent for a cooking-stove, did not claim the cooking- stove as an entirety, " but an improvement on such stove." It was not stated in the declara- tion what this improvement was. To so state held to be an essential part of the complainants' case, and the failure to so state was held demur- rable. Peterson et al. v. Wooden, 3 McLean, 248.— McLean, 1843. 33. " The profert of the letters-patent (of which the specification constitutes a part) makes the letters-patent, when produced, a part of the declaration, and so gives all the certainty, as to the invention and improvement patented, whicli PLEADING. 569 is required by law. " PiUsY. WJutnmn, 2 Story, 609.— Stoby, 1843. 34. " There must be in the bill allegations broad enough to cover any evidence offered be- fore it becomes admissible." NesmitJi et al. v. Calvert et al., 1 Woodbury & Minot, 84. — "WOODBTJEY, 1845. 25. In making the defence of prior use, in an equity answer, the names, residences and places of the prior users should be stated. Orr v. Mer- rill, 1 Woodbury & Minot, 376. — Woodbury, 1846. 26. When an abandonment is relied on it should be stated in the plea, and also the facts on which the pleader relies as showing abandon- ment. Root V. Ball etal., 4 McLean, 177. — Mc- Lean, 1846. 37. Where there is no notice or plea authoriz- ing defendants to show a want of novelty in the invention, evidence given under that head will be disregarded.— iS. 38. Where defendant in his answer attempts to justify under a license, and complainants hold that the license has been abandoned or forfeited, the facts upon which complainants rely must be pleaded in the bill. The proper issue cannot be raised simply by filing a replication. Brooks et al. V. Stolley, 4 McLean, 275. — McLean, 1846. 39. "Variance between the declaration and writ cannot ... be taken advantage of on gen- eral demurrer. " Wilder v. McCormick, 3 Blatch. 31.— Betts, 1846. 30. A declaration need not aver the time at which the patentee made the invention. — lb. 31. A declaration need not aver that the ap- plication for patent was in writing, nor that the Commissioner of Patents had authority to grant the patent. — lb. 33. " The grant of the patent is itself sufficient evidence that all the preliminary steps required by law were properly taken. And, as the plain- tiff may make his patent the direct and efficient proof in the first instance of his right to the grant, so, a fortiori, it would seem to be unnecessary for him to plead any of the particulars which con- duced to the grant. It is sufficient to set forth the grant in substance." — lb. 33. " The question of the regularity of the proceedings in petitioning for and obtaining the patent, and that of the correctness of the judg- ment of the office in awarding it, are not mate- rial, and cannot be inquired into." — lb. 34. A declaration averred the patent and specification to be " in language of the import and to the effect following." It was alleged as cause for demurrer that "tenor" should have been used in the place of " import. The declaration was held sufficient. — lb. 35. A declaration read, "as by the said let- tei's-patent and specification all in due form of law, ready in court to be produced, will fully appear." This was held to be a proper profert. —lb. 36. "A reiteration of infringement of a pat- ent like a repetition of torts of any other kind, which are of the same nature, may be sued for and recompensed in -tone action. There is no known doctrine of the law that requires a plain- tiff to split up into separate actions, grievances of that character." — lb. 37. Where a declaration, though not formal in its frame, embodies all that is essential to en- able the plaintiff to give evidence of his right, and of its violation by the defendant, and affords to the defendant the opportunity to interpose every defence allowed him by law, the court will not encourage objections merely critical and will seek to sustain the declaration. — lb. 38. By the court: "The practice here is, usually, for the complainant to make oath to his bill where it is signed, but this is not imperative nor uniform. It is not then done if he is absent or indisposed, though it should be done probably before the hearing, unless it be a bill for a cor- poration, or unless an answer under oath is not asked, or unless an oath to the bill is waived,, or its absence is not objected by the respondents when first heard. And if the principal is not in a situation to swear to it, the oath may be made by an agent. ' ' Woodioorih et al.y. Edwards et al., 3 Woodbury & Minot, 130.— Woodbuky, 1847. 39. An original bill for relief, which calls upon the defendant to answer, must contain in- terrogatories or the defendant need not answer. Wilson V. Stolley, 4 McLean, 273. — McLean, 1847. 40. Where the defence of prior use is pleaded, nothing more specific is rec[uired than the names and residences of the persons who possess the prior knowledge of the thing patented, and the name of the place at which it had been used. It would be unreasonable to extend the language of the act, unless it clearly required the court so to do, to the names and residences of all the wit- nesses whom the defendant meant to sumnion. Wilton Y. The Railroads, 1 Wallace, 192.— Sup. Ct. 1847. 41. A petition for leave to file a supplemental bill need not embrace the averments thereof, but need only advise the opposite party and the court of the ground on which the relief is applied for. Pa/rkhurst v. Kinsman et al., 3 Blatch. 73.— Betts, 1848. 570 PLEADING. 42. A petition for leave to file a supplemental bill bringing in a new party, is sufficiently de- fined in charging that such other party has be- come connected with the subject-matter of the suit since the original bill was filed, and is, in that connection, doing acts which the court has by injunction restrained the original party from doing ; and that is, in substance, sufficient to authorize the plaintiff to bring in the new party. —lb. 43. A declaration avefted " that before the expiration of the term for which the original patent was granted, to wit, October 4th, 1843, it ■was in due form of law extended for the term of seven years from and after October 19th, 1843." Being demurred to, it was held suffi- cient in form. Phelps v. Combstock, 4 McLean, 353.— McLban,- 1848. 44. ■ It is not necessary to aver in a declaration that the act complained of is contrary to the statute. Parker v. Howm-th, 4 McLean, 370. — McLean, 1848. 45. The right given by the statute to plead the general issue, and give notice of special defence, is an enlargement of the defendant's mode of defence, and does not take away his right to ple^d specially. But such a plea must be put in thirty days before the term or the plaintiff will be entitled to a continuance. Phillips v. Comb- etock, 4 McLean, 525.— McLean, 1849. 46. In pleading a book as a prior publication the notice should specify the page or heading. Foote V. Silsby et al., 1 Blatch. 445.- — Nelson, 1849. 47. A plea in bar alleged that the patentee was not the inventor of the thing claimed, and that a certain foreigner was. The plea was held de- fective in not alleging knowledge of the foreign invention on the part of .the plaintiff. Smith v. Ely et al., 5 McLean, 76.— McLean, 1849. 48. "A plea in bar must contain a full de- fence against the right of the plaintiff, and if it fall short of this it is bad on demurrer." — lb. 49. Subsequent to the act of 1839 a plea in bar alleged that the patented improvement was in public use at the time of the application for patent. Plea held defective because the law permitted such use for two years. — lb. 50. ' ' Oyer of letters-patent is not demandable, as of a deed. But, being matter of record, it is accessible to the defendants and should have been stated in the plea, as it is not necessarily a part of the declaration, so as to enable the court to act upon the face of the plea." — lb. 51. " Graving oyer does (not) make the speci- fication a part of the plea." — lb. 52. Complainant had a patent for a certain invention and a subsequent patent for a further improvement thereon. The declaration, which included both patents, was held not to be multi- farious. Cass v. Pedfield et al., 4 McLean, 526. — HuNTtNGTON, 1840. 53. A declaration is not demurrable because it does not allege the recording of assignments. —lb. 54. An allegation in a declaration that the de- fendants made, constructed, and vended the in- vention to sundry persons, is a sufficient state- ment of infringement.— J J. 55. The defences which the statute permits to be made under the general issue with special notice cannot be set up in special pleas. They will be stricken out with costs. Wilder v. 6a/y- ler et al., 1 Blatch. 597.— Nelson, 1850. 56. Upon a motion for provisional injunction, where a prior adjudication is relied upon, the bill of complaint must make averment thereof. The averment may be added by amendment. Parker v. Brant et al., 1 Fish. P. C. 58. — GBreii, 1850. 57. " It is essential to a valid bill of discovery that it set forth a title in the party which is suffi- cient to support or defend a suit, and that it pray a discovery pertinent to that title and nothing beyond." Young et al. v. Colt, 3 Blatch. 37S. — Bbtts, 1852. 58. He who infringes should satisfy himself of his right beforehand, not infringe first and look up defences afterward, and the statutory reference to the pleading of defences is to be construed in this light. Bilsby et al. v. Foote, 14 Howard, 218.-Stjp. Ct. 1853. 59. A replication may be special and set up matters in avoidance of the plea or answer. Goodyear v. McBurney, 3 Blatch. 32. — Nelson, 1853. 60. " Defences such as ' a license ' or ' alien- age ' must be specially pleaded. " Minie's As- signees V. Adams, 3 Wall., Jr., 20.— Gbier, 1854. 61. A demurrer made to cover a number of pleas, some of which pleas are good and some bad, will be overruled. Brown v. Duchesne, 3 Curtis's C. C. 97.— Cdrtis, 1854. 63. "In actions at law for the infringement of patent rights, a defendant is not limited, in his defence, to the plea of the general issue al- lowed by the statute, even if his defence rests upon matters whi^h the statute authorizes to be given in evidence under the general issue, but . . . he may, at his option, plead those particu- lars specially." Day v. New England Car- Spring Co., 3 Blatch. 179.— Betts, 1854. 63. There " are instances in which a defend- PLEADING. 571 ant has his election to rely upon the general is- sue, or to plead his defences specially. "—JA. 64. "If the patentee seeks for an injunction on the ground of an infringement, and states nothing about the contract which authorized the use, and such a contract by llie answer ap- pears, he must, by the rules and decisions of the Supreme Court of the United States, amend his bill before he can be allowed to impeach the contract, or go out of court." Day v. Harts- Jwrn, 3 Fish. P. C. 33.— Pitman, 1855. 65. In suing for infringement, it is not neces- sary to aver the residence of complainants or de- fendants. Teese et al. v. Plielps et al., 1 McAl- lister, 17.— McAllisteb, 1855. 66. In actions in equity as well as In actions at law, the notices of the defence must be set up in defendants' pleadings. Pitts v. Edmonds et al, 1 Bissell, TJ. S. C. 168.— McLean, 1857. 67. Notice of prior use which, as regards lo- cation, only gives the county, is defective and in- sufficient. Hayes et al. v. Sulsor et al., 1 Bond, 279.— Leavitt, 1859. 68. A defendant pleaded the general issue and gave notice of special defences. He also tiled special pleas within less than thirty days before trial. On motion the special pleas were struck out. Latta v. 8hawk, 1 Bond, 359. — Leavitt, 1859. 69. In giving notice of prior use under the general issue, the residences of persons and places of use must be given more specifically than by simple mention of cities. — lb. 70. " The act of Congress requires . . . that notice of the special matter to be offered in evi- dence at the trial shall be in writing, and bo given to the plaintiff or his attorney more than tliirty days before the trial. . . . " Compliance with this provision on the part of the defendant being a condition precedent to his right to introduce such special matter under the general issue, it necessarily follows that he may give the requisite notice without any leave or order from the court ; and, for the same rea- son, if he afterward discovers that the first notice served is defective, or not sufficiently compre- hensive to admit his defence, he may give an- other, to remedy the defect or supply the defi- ciency, subject to the same condition, that it must be in writing, served more than thirty days before the trial. " Having given the notice as required by the act of Congress, the defendant at the trial may proceed to prove the facts therein set forth by any legal and competent testimony. For that purpose he may call and examine witnesses on the stand, or he may introduce any deposition that has been legally taken in the cause. Under those circumstances, depositions taken before the notice was served as well as those taken afterward, are equally admissible, provided the statements of the deponents are applicable to the matters thus put in issue between the parties. " Teese et al. v. Huntington et al., 33 Howard, 3. -Sup. Ct. 1859. 71. It seems that in an interference proceeding in court, the bill must allege that the patentee has surreptitiously or unjustly obtained his pat- ent for that which was in fact invented or dis- covered by the complainant, who was using rea- sonable diligence in adapting and perfecting the same. Mlit/wrpe v. Roliertson et al., 4 Blatch. 307.— Ingersoll, 1859. 73. Where a bill of complaint is brought upon a plurality of patents, and the bill charges that the machine made and used by the defendant, contains all the improvements made in the sev- eral patents, the bill is not bad for multifarious- ness. Mourse et al. v. Allen, 4 Blatch. 376. — Nelson, 1859. 73. The simple averment that the title of the patents in suit is invested in the complainants is sufficient. —lb. 74. Where a complainant would take advan- tage of a forfeiture of a license in suing for in- fringement, that allegation must beset up in the bill. Bloomei' v. Oilpin et al., 4 Fish. P. C. 50. — Leavitt, 1859. 75. The defendant, in pleading prior use, pleaded it as of a certain date, and the court be- low refused to allow the defendant to give evi- dence of prior use of a prior date. It was held that evidence of prior use at a prior date was admissible. Phillips v. Page, 24 Howard, 164. -Sup. Ct. 1860. 76. Different persons were charged in a bill of complaint with infringement under the terms ' ' that the respondents are using, " etc: This was held to be sufficient allegation that the de- fendants were acting in concert in their infringe- ment. Poppenhusen v. Falke et al,, 4 Blatch. 493.— Shipman, 1861. 77. The defence of unreasonable neglect or delay in filing a disclaimer must be specifically set up in defendants' pleading. Burden v. Corning et al., 2 Fish. P. C. 477. — Nelson and Hall, 1864. 78. The defence of insufficiency of specifica- tion must be set up in defendants' pleading. Ooodyeof et al. v. Providence Rubber Co. et al., 3 Clifford, 351.— Clipfobd, 1864. 79. In a suit in equity, filing notice of special matter is wholly irregular. The issue must be raised by the allegations in the bill, in answer. 572 PLEADING. and whenever either the bill or answer is de- fective the defect must be cured by amendment and cannot be cured by filing special notice. Doughty v. Westet al., 3 Fish. P. C. 553.— Ship- man, 1865. 80. The defence that a complainant is not really the joint stock corporation that it claims to be, must be pleaded in abatement, for it can- not be pleaded in bar nor given in evidence under the general issue. Dental Vulcanite Co. V. Wetlmrbee, 3 Clifford, 555.— Clifford, 1866. 81. " It is clear . . . that the defendant may specially plead that the plaintiffs are not the original inventors of the thing patented as alleged in the declaration." Readet al. v. Miller et al., 2 Bissell, 13.— McDonald, 1867. 83. The same defence cannot be set up both by a special plea and also under the general is- sue with notice. — lb. 83. The complainant need not set out in his bill the details of his invention or of defendant's manufacture. As regards the question of in- fringement a general allegation suffices. Tur- rell V. Canimerrer, 8 Fish. P. C. 463. — Leavitt, 1868. 84. A bill of complaint need not contain a special prayer for a provisional injunction in order to enable the complainants to have one. Goodyear et al. v. Mullee et al., 8 Fish. P. C. 420.— Grier, 1868. 85. It is not necessary for complainants to al- lege that they properly stamp the date of the l^atcnt on goods sold. Qoodyear et al. v. Allyn et al., 6 Blatch. 38.— Blatch. 1868. 86. Where the owner of a patent and the in- jured licensee, a corporation, join as complain- ants, the bill may be verified by the oath of the president of the corporation. — lb. 87. An allegation in the answer that the in- vention, at the time tlie application was filed, and for a long time before, had been on sale and in public use, is not a good defence against the charge of infringement. Agawam Co. v. Jor- dan, 7 Wall. 583. -Sdp. Ct. 1868. 88. Where a patent is extended by virtue of a special act of Congress the act need not be re- cited.— JS. 89. In a suit for infringement of an extended patent, an allegation by defendant that his ma- chine was in use before the patent in suit was granted, is not the pleading of a good defence. —lb. 90. " Conditional denials . . . are ijot regu- lar, but if the respondent intends to contest the novelty of the invention, his denial in that be- half should be explicit and unqualified. " Pleadings in equity, as well as in actions at law, should be single, clear, and free of evasion. More than one defence may be jjresented in the answer, but each should be separately and clear- ly alleged, without any conditions or undefined qualifications." Oraham et al. v. Mason, 4 Clifford, 88.— Clifford, 1869. 91. "Persons charged as infringers may set up the defence that the patentee was not the original and first inventor of the alleged im- provement, but in that event they must allege in the answer, if the suit is in equity, the names and places of residence of those whom they in- tend to prove to have possessed a prior knowl- edge of the thing, and where the same had been used." — lb. 93. ' ' An objection to ambiguous pleadings in an answer ought not generally to be taken by exceptions, as they are proper subjects of amend- ment under special orders. ' ' — lb. 98. The question whether the joinder of an unnecessary party as complainant in a bill in equity can be taken advantage of by demurrer, is well settled in the affirmative. Hodge et al. V. North Missouri Railroad, 1 Dillon, 104. — Treat, 1869. 94. " Whenever the defendant relies in his defence on the fact of a previous invention, knowledge, or use of the thing patented, ' he shall state, in his notice of special matter, the names and places of residence of those whom he intends to prove to have possessed a prior knowledge of the thing, and where the same had been used,' and if he does not comply with that requirement no such evidence can be received under the general issue." Blanchard v. Put- nam, 8 Wallace, 430.— Sup. Ct. 1869. 95. " The plea 6f not guilty puts in the issue the novelty of the invention as well as the charge of infringement." — lb. 96. " Defendant pleaded the general issue, and also gave notice that the invention claimed was well known and in general use before the patentee professed to have invented it, and he specified Utica, Rochester, Buffalo, Albany, New York City, and Brooklyn, in the State of New York, as the places where it had so been used, and gave the names of witnesses in each of those places by whom he expected to prove that fact ; but he did not specify the mills in which the sup- posed prior use had been made." This plead- ing was held sufficient. Wisi v. Allis, 9 Wall. 787.— Sup. Ct. 1869. 97. If the right of the executor to bring suit on the testator's patent is questioned, it must be done by pleading in the answer. Rubber Co. v. Goodyear, 9 Wall. 788.— Sup. Ct. 1869. 98. If complainants would have a former suit PLEADING. 573 operate as an estoppel It must be set up in the pleadings. Blandy et al. v. Griffith et al., 3 Fish. P". C, 609.— SwAYNE, 1869. 99. The defence of insufficiency of specifica- tion cannot be entertained if it is not pleaded in the answer. — lb. 100. " A cross-bill is brought to obtain a dis- covery in aid of a defence to the original suit, or to obtain a complete relief to all the parties as to matters charged in the original bill. It should not introduce any distinct matter. It is auxiliary to the original suit, and a graft and dependency, though it may have a connection with the same general subject." Rubber Co. v. Goodyear, 9 Wall. 807.— Sup. Ct. 1869. 101. Pleadings may be made to conform to the evidence even after final hearing. Brown v. Hallet al., 6 Blatch. 401.— Blatch. 1869. 103. "Where jurisdiction depends upon citizen- ship, the necessary averment of citizenship, to confer jurisdiction, must appear on the face of the bill. Meserole et al. v. Union Paper Collar Co., 6 Blatch. 356.— Blatch. 1869. 103. " Eule 60, of the rules of equity pre- scribed by the Supreme Court, provides that after a replication is put in, the answer shall not be amended in any material matters, as by add- ing new facts or defences, except by special leave of the court or a judge thereof , upon motion and cause shown, after due notice to the adverse party, supported, if required, by afiSdavit. . . . In administering Rule 60, it is undoubtedly a proper construction of it, in analogy to the re- quirements of Rule 29, that good cause for al- lowing an amendment of an answer, so as to set up a new defence, ought not to be regarded as being shown when it appears that the matter of the proposed amendment could, with reason- able diligence, have been sooner introduced into the answer." India Rubber Comb Co. v. PJielps, 8 Blatch. 85.— Blatch. 1870. 104. " There being no question made that the plaintiff's patentee was the original and first in- ventor, and the prior use relied upon being a prior use only by the inventor himself, or under his license, it is not necessary, in the statutory notice, to give the names of the persons using, or the places where used." Am. H. & L. 8. S I). M. Co. V. Am. T. & M. Co. et al., 1 Holmes, 503.— Shbplet, 1870. 105. "When a party gives notice of special matter of defence under the general issue, and in that notice sets up priority of invention and of use by others, for the purpose of showing that the patentee was not the original and first inventor, he must in his notice specify the names of the persons using, and the place where used ; but if the prior use relied on be a use by the in- ventor, or by persons with his consent or allow- ance, then it is not necessary to notify him of the names of the persons using the invention, or of the place where used. " — lb. 106. " Defences not set up in the answer will not be examined." Howes y. Nute, 4 Clifford, 173.— Clifford, 1870. 107. " A patentee who complains of an in- fringement, has a right, when his patent is to be assailed for want of novelty in the invention, to be informed distinctly by the answer to his bill, if he proceeds in equity, that such a ground of defence will be taken." Jordan v. Dobson et al., 3 Abb. U. S. 398.— Strong, 1870. 108. " Parties defendants, sued as infringers, are not allowed in an action at law to set up the defence of a previous invention, knowledge, or use of the thing patented, unless they have given notice of such a defence thirty days before the trial, and have stated in the notice ' the names and places of residence of those whom they in tend to prove to have possessed a prior knowl- edge of the thing, and where the same had been used ;' and the settled practice in equity is to require the respondent, as a condition precedent to such defence, to give the complainant sub- stantially the same information in his answer." Seymour v. Osborne, 11 Wall. 516. — Sup. Ct. 1870. 109. In a suit for the annulment of a patent " the fact that the suit is instituted on the be- half of the United States by the person who is District Attorney, and that he acts as such, in- stituting the suit on behalf of the United States, must appear by the face of the bill or declara- tion, or the pleading will be held bad." United States V. Boughty, 7 Blatchford, 434. — Blatch- FORD, 1870. 110. Prior notice in the answer of a special defence permitted by statute is required as the condition precedent to the right to introduce proofs to support such a defence ; " but it is an abuse of the privilege to give such notices with- out some reason to suppose that such a defence can be successfully made, and that the proofs, if required, can be obtained, as it exposes the com- plainant to unnecessai'y expense and trouble in preparing his case for trial." — lb. 111. By the Supreme Court : " Prior to the act of Congress allowing several patents to be is- sued for distinct and separate parts of the thing patented, it is not probable that a bill of com- plaint joining five several patents in the same charge of infringement would have escaped ob- jection from the respondent, but it will be noticed that all the claims appertain to the same general 574 PLEADING. subject, and that it requires all the inventions in question to constitute a complete self-raking harvester or reaping-machine, and that they are all embodied in the machines which the com- plainants make and furnish to the public. Viewed in that light, the court is of the opinion that the objection, if it had been made, could not have been sustained. ' ' — JS. 112. Where the respondents are entitled to an equitable title in the patent of which complain- ant owns the legal title, a cross -bill is a proper mode of establishing respondents' title. Bran- don M'fg Go. v. Prime et al., 14 Blatch. 371.— "Wheeler, 1871. 113. By setting down a plea for argument, complainant admits the facts therein alleged ; the sufficiency of the plea as a defence is the question to be considered. Wheeler v. McOor- mick, 8 Blatch. 267.— Woodrdfp, 1871. 114. Where a plea makes reference to an an- nexed paper, the plea is to be considered as though the papers were incorporated with the plea. — IT). 115. It is irregular to file two pleas without special leave, and both are liable to be overruled as improperly interposed. — lb. 116. Where complainant's answer does not fully and unequivocally deny a plain charge of infringement in the bill, the infringement is to be taken as admitted. Jordan v. Wallace et al., 1 Pa. Leg. Gaz. Eep. 354.— McKennan, 1871. 117. A prior patent cannot be used to antici- pate a later patent, in suit, in the absence of proper allegation in the answer. American Sad- dle Co. Y. Hogg, 1 Holmes, 133.— Shbplet, 1872. 118. " No notice is necessary in order to jus- tify the admission of evidence, for the purpose of showing the state of the art in respect to im- provements existing at the date of the plaintiff's invention in the class of articles to which it be- longs." — lb. 119. " An allegation in the bill of making or using would be bad pleading, and . . an al- legation of making and using is proved, to all intents and purposes, by proof of using alone. " Locomotive Engine Safety Truck Co. v. Erie Railway Co., 10 Blatch. 292. — Blatchpokd, 1872. 120. The averment in an answer was of " prior knowledge of the invention claimed, and of its use at the works of the Walnut Grove Mining Company, of the Louisa Mining Com- pany, and of the Slate Hill Mining Company, all in Louisa County, Va., and at the works of the Vancieuse Mining Company, near Fredericks- burg, Va., was possessed by Charles E. Seidel, residing in the City of Pittsburg.'' This was held to be proper pleading of 'the defence of prior use. Smith et al. v. Fraaeret al., 3 Pittsb. 897.— McKennan, 1872. 121. In an equity suit upon letters-patent, it is not necessary to specifically allege how many claims a patent has or what particular claims are infringed. Haven et al. v. Brown et al., 6 Fish. P. C. 413.-9WAYNE, 1873. 122. " It is undoubtedly irregular to swear a person in a suit before the bill has been filed. The irregularity consists in having the affidavit sworn to under the title of a suit in which no bill has been filed. If the title had been omitted, there would have been no irregularity. " Bald- win V. Bernard et al., 5 Fish. P. C. 442. — Blatchpoed, 1872. 123. The defence of two years' public use and that of abandonment ought to be kept distinct and not blended in pleading. Jones et al. v. Sewall, 3 Cliff. 563.— Clipford, 1878. 124. The bill of complaint need not specifically pray for damages in order to have damages al- lowed. The general prayer for grant of gains of profits and other relief is sufficient. Emerson et al. V. Simmet al., 6 Fish. P. C. 281.— Nixon, 1873. 125. Defendants' plea set up " that long prior to said pretended invention, the same was fully described and shown in the following letters pat- ent, to wit : Letters-patent of the United States, No. 17,864, granted George S. Avery, July 28th, 1857, for ' improvement in segmental truss for bridges,' " and the pleading was held sufficient. Westlalce v. CoA-tter et al., 6 Fish. P. C. 519.— Treat, 1873. 126. Defendants served notice of a prior pat- ent upon plaintiff, August 25th, 1873. The first day of the term was September 15th, but the trial of the case did not begin till October 7th. On offering the patent in evidence, plaintiff's counsel objected that the notice was not given thirty days before the first day of the term, and the court sustained the objection. — lb. 127. Equity action was brought for infringe- ment of three different patents, the infringing article being a hay-fork. Demurrer for multi- fariousness was filed, the court thereof saying : " There is not explicit averment here that the forks, made and sold by the defendants, contain all the improvements embraced in the complain- ants' patents, and the interrogatories clearly in- dicate that a discovery is sought touching only the several infringements of each patent ;" the court sustained the demurrer. Nellis et al. v. McLanahan et al., 6 Fish. P. C. 286.— McKbn- NAN, 1873. 128. The defence that a patented improvement PLEADING. 575 is not patentable subject-matter may be reached by a general denial of patentable novelty in the answer. Ouidet v. Barber, 5 O. G. 149. — Nixon, 1873. 139. An answer, in the names of three defend- ants, was put in as their joint and several an- swer, but was sworn to by only two of them. It WEis held to be irregular, but that complainant might have accepted the answer, replied to it, and thereby waived the irregularity. Bailey Wash- ing-Machine Co. V. Young et al., 1 Banning & Arden, 362.— Woodrupf, 1874. 130. " An order granting leave to answer with- out oath or signature is necessary, and, if cir- cumstances render it proper, would be granted. " —/J. 131. " The complainant has a right to require that whatever answer is put in be authenticated by the defendants who profess or purport to answer." — lb. 133. An answer filed as the joint and several answer of three defendants and sworn to by only two of them, should be taken from the files, with leave to the defendants who have answered to erase the name of the other defendant, and file the answer as their own only. — lb. 133. Two patents were set up in a bill of com- plaint, and it appeared generally, though not specifically alleged, that the same article of de- fendant's infringed both patents. Complainant held his title to the territory where the infringe- ment was committed, and where suit was brought, under diilerent assignments covering different territory. The bill was held not to be multifarious for either of these reasons. Gilles- pie V. Oummings, 3 Sawyer, 359. — Sawybk, 1874. 134. A bill addressed to the " Circuit Court, etc., in chancery sitting" is sufficiently ad- dressed. Sterriek v. Pugsley et al., 1 Flippin, 350.— LONGYEAB, 1874. 135. To entitle a bill in the name of the cause until the bill is filed, is irregular, and may be re- jected as surplusage. — lb. 136. Affidavits sworn to before a United States circuit court commissioner should have a venue as follows : " United States of America, District oi—."—Ib. 137. Afiidavits taken before a suit is com- menced are not to be entitled in any suit, and where they are so entitled, it is a good cause for their rejection. — lb. 138. Prior publications cannot be offered in evidence by defendants without proper allega- tion in the answer. EarleY. Dexter et al., 1 Holmes, 413.— Shbpley, 1874. 139. Where the bill of complaint charges the defendants with joint infringement, and the proof is that it is several, the objection that two or more distinct subjects cannot be embraced in the same suit does not apply where there is a privity or connection between the two defend- ants with reference to the object or subject-mat- ter of the action. Wells v. Jacques et al., 1 Ban- ning & Arden, 60. — McKbnnan and Ntxon, 1874. 140. Where a bill of complaint does not allege that the matter in question had ever been before litigated, or acquiesced in by the public, the bill is defective on a motion for provisional in- junction. Outta Pereha Miss. Valley Transp. Co., 5 McCrary, 561.— Treat, 1883. 233. ' ' A bill which, under Section 4918 of the Revised Statutes, upon proper averment, prays an adjudication concerning conflicting patents, and also alleges an infringement of the plaintiff's patent by the defendant, by reasoj of the manu- facture and sale by the latter of articles con- structed under his letters, and prays an account- ing and damages, is not demurrable for mis- PLEADING. 581 joinder of causes of action. ' ' Leacli v. GlMndXer etal., 18 Fed. Rep. 363.— "Woods, 1883. 334. Where a bill of complaint does not show in the complainant a right to profits and dam- ages accruing before the complainant took his assignment of the patent, the decree cannot cover profits and damages accruing before such assignment. 'N. Y. Grape Sugar Co. v. Buffalo G. Siigar Co. et al., 21 Blatch. 519. — Shipman, 188.3. 225. A state law requiring a verification of defendants' plea by oath, applies, under Section 914 of the Revised Statutes, to pleas both gen- eral and special in a suit at law-, on a patent, in a United States court. Cottier et al. v. Stitnson et al., 9 Sawyer, 435. — Dbadt, 1883. 233. General issue " with notice" and special pleas may be joined. — lb. 227. By the court : "No objection having been taken by demurrer or the answer to the non-joinder of the other two owners of this li- cense, such non-joinder cannot now be insisted on to defeat a decree. " Adams et al. v. Howard et al., 23 Blatch. 47.— Wallace, 1884. 238. It seems that in action at law for the re- covery of damages, for the infringement of a patent, distinct and several pleas of the statute of limitations covering different periods of time, may be pleaded. Hayden v. Oriental Mills, 22 Fed. Rep. 103.— Colt, 1884. 239. The court may dismiss the bill on the ground of want of patentability without look- ing into the answer, and to that end may read complainants' patent in view of the state of the art. Nicodemuset al. v. Frazier, 19 Fed. Rep. 260.— Morris, 1884. 230. "Where the plaintiff brought suit for the United States as well as himself, to recover the penalty given by the statute -which forbids the stamping of unpatented articles as patented, and pleaded some special damage, this last was held to be irrelevant, and subject to be stricken out on motion under the New York code of procedure, which regulates the practice in common law actions in the district where the suit is brought ; this pleading was not, however, held objection- able on demurrer. Winne v. Snow, 19 Fed. Rep. 507.— Brown, 1884. 331. In an action on the statute which forbids the stamping of unpatented articles as patented, the complainant need not allege that the articles are patentable. — JS. 232. " The object of a plea when there is some certain, single issue, requiring but little evidence, that will dispose of the whole case, if under- stood, is to try that issue without putting the parties to the expense of a trial of the case at large, and pleas are limited to a single defence or issue, unless by permission of the court the defendants are allowed to plead double." And when the effect of a plea would be to have the whole case tried piece-meal, it is not allowable. Giant Powder Co. v. Safety Nitro- Powder Co. et al., 19 Fed. Rep. 509.— Sawyer, 1884. 233. A- plea having been filed, and it having been stipulated that it should stand for an an- swer so far as it was available as a defence, and testimony having been taken, an attempt to in- troduce a new plea was disallowed, — lb. 334. It seems that the question whether two patents interfere with each other may be prop- erly raised by demurrer to the bill. Morris v. KempsTutll M'fg Co., 20 Fed. Rep. 121.— Ship- man, 1884. 235. "Where defendants' answer was irregular in its form, and complainant " did not move to have the answer taken off the file for irregular- ity, nor to have the bill taken pro confesso for want of an answer, as if the answer were void, nor except to the answer for insufficiency by re- ply to it, he admitted it to be sufficient, however imperfect it might be. The issue joined upon the answer by the traverse was upon its allega- tions and denials as they were, and the oi-ator, by joining that issue, placed himself where he must overcome the denials and maintain his bill." Wooster v. Maser et al., 20 Fed. Rej). 162.— ■Wheeler, 1884. 236. "An answer in equity is required for discovery and evidence as well as for grounds for defence, and evidence cannot be given bj' at- torney ; therefore, an answer cannot be made by an attorney," and an answer thus made is ir- regular. — lb. 237. Complainant's bill of complaint included five different patents, one for an electric light- ing system, one for an improved regulator for electric lights, one for an improvement in elec- tric lamps, one for an improvement in carbon for electric lights, and one for an improvement of carbons for electric lights. The bill was de- murred to for multifariousness. The bill alleged that the patented inventions were capable of be- ing used conjointly ; that the orator made, used, and sold them conjointly, as parts of the same electric lighting system, each and all of said in- ventions in some essential and material parts thereof ; and that the defendant was infringing each and all of these patents by making, selling, and using each and all of said inventions con- jointly in a system of electric lighting, the same substantially as that of the orator. The de- murrer was sustained and the bill adjudged 582 PLEADING. multifarious. GonaoUdated Meetrie Light Co. V. Brush-Swan Meetrie Light Co., 33 Blatch. 306.— Wheblbr, 1884. 338. After delivery of the court's opinion, but before the signing of the interlocutory decree, complainant moved to amend the bill by the in- sertion of averments to the effect that the as- t,ignment whereby complainant derived its title, conveyed to complainant the right of recovery for previous infringements. The amendment was allowed. JV. T. Grape Sugar Go. v. Buffalo Grape Sugar Go. et al., 33 Blatch. 183.— Ship- man, 1884. 339. Complainant joined three patents in one suit. Thereof the court said : " The improve- ments covered by the four above specified claims are susceptible of conjoint use, and they are so used by the defendant in the machines com- plained of." Stub V. Armstrong & Son, 38 O. G. 367.— AoHBSON, 1884. 340. Where, in an action at law for infringe- ment of a patent, the defendants plead the gen- eral issue, the special matters of defence allowed by the statute are to be set up in a notice, and that notice served on the defendants. But the notice is no part of the answer. " These mat- ters might have been set up in special pleas without otherwise giving notice of them." Cottier et al. v. Stimson et al. , 30 Fed. Rep. 906. — Deadt, 1884. 341. Where defendants file a special plea set- ting up new matter, not making an issue with any allegation in the complainants, such special plea ought to conclude " and this the defendants are ready to verify. " — lb. 343. " A plea of ' not guilty ' puts in issue the alleged acts of the defendants, constituting the infringement of the letters-patent." — lb. 343. Complainant contended that defendant was estopped from contesting the validity of complainant's patent, because the maker of the articles used by defendant had confessed and acknowledged the validity of complainant's pat- ents in a license. It would seem that in order to make such a contention available it must be suggested in the bill of complaint, and that it must be shown that respondent was a party to such a written agreement. Baltimore Car Wheel Co. V. North Baltimore Passenger Itailway Co., 31 Fed. Rep. 47.— Morris, 1884. 344. It is doubtful if the defence that a pat- entee has not properly stamped his articles with the date of his patent can be" made available unless it is set up in the answer. Sessions v. Bomadka et al., 31 Fed. Rep. 134.— Dyer, 1884. 345. " The defence of unreasonable neglect or delay in filing a disclaimer must be set up in the answer before it can be considered by the court." Worden et al. v. Searls, 31 Fed. Rep. 406.— Nixon, 1884. 346. The question of laches on complainant's part can be raised by demurrer. McLaughlin V. People's BailwoA/ Co., 31 Fed. Rep. 574. — Brewer, 1884. 347. Where, in an equity suit, defendant de- sires to avail himself of the defence that the patent is too near its expiration to warrant an injunction, a demurrer is the preferable mode of raising that question. N. Y. Ch'ope Sugar Co. V. Peoria Grape Sugar Co., 31 Fed. Rep. 878.— Blodgett, 1884. 348. Mandamus is the proper form of action, proceeding from the Supreme Court of the Dis- trict of Columbia and directed to the Commis- sioner of Patents, when it is sought to have the Commissioner perform a duty imposed by the statute. Butterworth Gom'r v. Hoe et al., 113 U. S. 50.— Sup. Ct. 1884. 349. It seems that in an action at law for the recovery of damages for the infringement of a patent, distinct and several pleas of the statute of limitations, covering different periods of time, may be pleaded together. Hayden v. Oriental ' Mills, 33 Fed. Rep. 103.— Colt, 1884. 350. Where there is a plurality of patents set up in complainants' bill, and also a plurality of alleged infringers, the bill must allege that all the patents were susceptible of being, and were jointly used by the defendant. Or that they were susceptible of joint use, and that one or more of them was jointly used by the defend- ant. Shiekle et al. v. So. St. Louis Foundry Co., 33 Fed. Rep. 105.— Treat, 1884. 851. Where a complainant, in moving for a provisional injunction, relies upon the effect of conditions contained in licenses taken of com- plainant by defendant, the court will not pro- ceed to act upon such conditions where the li- censes are not mentioned in the bill. ' ' Prelim- inary relief will not be granted when upon the same proofs and allegations final relief would not be granted." This is true, although copies of the licenses are annexed, and although enough may bo spelled out from the affidavits of the defendant, and from the answer to the bill, to supply these omissions. " The court should not be asked to spend much time to find out whether the vital facts upon which the moving party relies, and which he has not taken the trouble to assert, can be exhumed from some other source. " Inter- nat'l Tooth Grown Co. v. Mills Co., 23 Fed. Rep. 659.— Wallace, 1884. 353. Where a complainant in his bill alleges PLEADING. 583 generally the surrender and reissue of his pat- ent, " it is not necessary to aver specifically the ground on which the original patent was sur- rendered. " Spaeth V. Barney, 32 Fed. Rep. 838. —Colt, 1885. 253. " Undoubtedly a corporation cannot be compelled to answer. under oath to a bill in equity. It answers only under the seal of a cor- poration. It is for this reason the practice has obtained of maliing the officers of the corpora- tion parties to the bill, and requiring them to answer the interrogatories. This, however, does not excuse a corporation from answering, and the complainant is entitled to an answer from a corporation as well as from an individual, al- though the answer may not be worth the ex- pense of the experiment. Although no officer or agent is made a party to the bill, it is still the duty of the corporation to cause diligent exam- ination to be made, and give in its answer all the information derived from such examination ; and if it alleges ignorance without excuse, a dis- position on its part to defeat and obstruct the course of justice may be inferred, which will justify the court in charging it with the costs of the suit." Colgate v. Gompagnie Frangaise du Telegraph, etc., 23 Fed. Rep. 82. — Wallace, 1885. 254. Where a bill for infringement of a patent is brought against a corporation and its assignee, and defendants set up by demurrer that the causes of action against the corporation and against the assignee are distinct and different in their nature, the demurrer is not good, because of the privity of action between the corporation and the assignee. Gordon et al. v. St. Paul Hanester WorJcs et al., 23 Fed. Rep. 147.— Nel- son, 1885. 255. A bill of complaint alleged that all the claims of all the patents were infringed in one structure. This was denied in the answer and shown to be untrue by the proofs. All the claims which were held to be valid and infringed were infringed by one structure, and the bill was therefore held not to be multifarious. Hayes v. Bichelhoupt, 23 Fed. Rep. 183. — Whbblbr, 1885. 356. A bill of complaint is not indefinite and uncertain because it does not set out a contract on which defendant relies for defence, and which, if it had been set out, would make the bill defective. Johnson v. Wilcox & Qibbs Sew- ing-Mach. Co., 35 Fed. Rep. 373.— Coxe, 1885. 357. Where a bill of complaint " sets out or exhibits both the original and the reissued pat- ent, and it appears from inspection that the sole object of the reissue was to enlarge and expand the claims of the original, and that a delay of two or more years has talien place in applying for the reissue, not explained by special circum- stances showing it to be reasonable, the question of laches is a question of law, arising on the face of the bill which avails as a defence upon a general demurrer, for want of equity." Wol- lensak v. Beilmr, 115 U. 8. 96.— Sup. Ct. 1885. 258. Where different suits are brought for the infringement of different patents, and the alleged infringements are all embodied in one kind of machine, the suits may, upon motion, be con- solidated. Deering v. Winona Harvester Works et al., 24 Fed. Rep. 90.— Nelson, 1885. 359. " When profert is made of a paper in the complaint, it is for all purposes presented to the court as part of the pleading, and an objection thereto may be taken by demurrer." Bogart et al. V. Hinds, 33 O. G. 1368.— Coxe, 1885. 260. " It is necessary that a bill in equity, for an injunction against the infringement of letters- patent for an invention, should contain such a description, as patented, as will apprise the court of its nature and character, and the particulars in which the improvement consists. This may be done by a full and accurate description, in the pleader's own language, of the patent, or by em- ploying the language of the specification, -or by a reference to and profert of the letters-patent." Post et al. V. T. G. Richards' Hardware Co., 35 Fed. Rep. 905.— Shipman, 1885. 361 . " By taking issue upon the plea, the com- plainants admitted its sutficiency in point of form and substance." Birdseye et al. v. Heilner et al., 26 Fed. Rep. 147.— Wallace, 1885. 262. Complainant's suit was brought for the infringement of five different patents, and in the bill of complaint the history of the different in- ventions was set out. Defendants took excep- tion thereto, but the court sustained the 'plead- ing, saying: "The history of the invention is always a part of the controversy of the case. The state of the art or steps which have been taken, either by the inventor of the patent in question or by other inventors, is always a nec- essary part of the testimony in the case, and it seems to me a proper matter of averment in this bill." Steam, Gauge & Lantern Co. v. MeBoberts et al., 26 Fed. Rep. 765.— Blodqett, 1886. 263. It is proper to set out in a bill of com- plaint prior litigations had upon the patent in suit. — lb. 264. In an action at law, plaintiff.'s allegation was of a contract to place an electric plant in a- building in a certain city, the performance of the contract, non-payment of part of. the purchase money, and an assignment of the contract to. 584 PEIOE INVENTION. the plaintifE. The defendant's answer iu one defence averred that it was a part of the contract that the contractor should furnish an indemnify- ing bond, guaranteeing against all infringements, and that that bond was not given. This allega- tion of defendant stating a perfect defence, an- other allegation of the defendant was on motion of the plaintifE stricken out, the allegation being that, since the putting of the plant in the build- ing two suits had been commenced for infringe- ment, and that defendant had been put to the expense of employing counsel to defend those suits. Horne v. Hoyle, 37 Fed. Rep. 216. — Brewer, 1886. 265. The statutory defences are not the only defences which may be made against a patent. Gardner et al. v. Herz et al., 118 U. S. 180.— Sup. Ct. 1886. 266. The respondent in its answer, said, "it has never felt disposed to contest said matter with the complainant, but chose rather to make such terms as were by said complainant made with other companies, and pay its royalty rather than to have litigation, and proposes to do the same now, and has so offered to do with said complainant both before and after this suit was commenced." Thereupon, the court said : " "With this admission in the defendant's answer there can be but one decree, and that is in favor of complainant, sustaining the, validity of the patent and finding infringement." Globe Nail Oo. V. Superior Nail Co., 27 Fed. Rep. 454.— Blodgett, 1886. 267. A bill of complaint for infringement in- cluded five patents. There was no allegation in the bill that the inventions were capable of con- joint use, or that the structure manufactured and sold by the defendants combined all the patent features. On demurrer the bill was held bad for multifariousness. Griffith v. Segar et al., 29 Fed. Rep. 707.— Coxe, 1887. 268. Where a bill of complaint sets out an act of infringement of a certain date, complain- ants cannot recover for acts of infringement prior to that date. Koalatype Engraving Co. et al. V. Hoke et al., 30 Fed. Rep. 444.— Thayer, 1887. 269. A bill was brought for an infringement of an original patent. Defendant answered that it had been surrendered and reissued. The pat- ent expired after the bill was amended to cover the reissue. It was held that such amendment was clearly within the power of tlie court. Beay v. Berlin & Jones Envelope Co., 30 Fed. Rep. 443.— Wheeler, 1887. 270. In an action for wrongfully stamping articles as patented, an allegation in the com- jjlaint that the stamping was done " on or about June, 1886," is sufficiently definite. Fish v. Manning etal., 31 Fed. Rep. 340. —Brown, 1887. 271. " In an action upon a penalty, the statute imposing it, and the violation thereof, must be pleaded with certainty. ... It is therefore im- proper and insufficient to refer to different stat- utes without specifying which is relied on." — lb. 272. A complaint in an action to recover pen- alties for wrongfully stamping articles as pat- ented, was held defective in not alleging " (a) that-the defendants had no patent for the article stamped ; (b) that the article stamped contained the patented improvement ; (c) that the stamp- ing was done without the consent of the plain- tiff's ' assigns or representatives.' " — lb. 273. In an action for the recovery of penalties for wrongfully stamping articles as patented, " an averment that the sales were made for the purpose of deceiving the public is not pertinent to the plaintiff's cause of action, which is found- ed upon the stamping of patented articles, while the averment is pertinent to the stamping of un- patented articles." — lb. 274. Defendant's answer averred " that it would be inequitable, under all the circum- stances of the case, to enjoin him from making and selling the device described in the third claim of complainant's letters-patent." The answer also averred ' ' that complainant is not entitled to equitable relief, because he has not come into equity with clear hands. ' ' The court held that under this pleading it could not con- sider any possible rights which defendant might have acquired as to the third claim of patent. Puetz V. Bransford, 31 Fed. Rep. 458.— Thay- er, 1887. 275. " Although formerly a complainant, by a special replication, could put in issue some fact on his part necessary for the evidence of new matter in the defendants' plea or answer, but not alleged in the bill, this is not now permissi- ble. Equity Rule 45. It is needless to say that no facts are properly in issue unless charged in the bill." Seibert Cylinder Oil Cup Co. v. Man- ning et al., 32 Fed. Rep. 625.— Wallace, 1887. 276. The fourth and fifth defences specified in Section 4S20 of the Revised Statutes are differ- ent defences, and, in order to be available, must be pleaded specifically. Meyers et al. v. . 32 Fed. Rep. 670.— Sawyer, 1887. PRIOR INVENTION. 'Prior Invention" in the Patent Acts. Act approved February 21st, 1793. Section 6. This section provides, as a defence PKIOR INVENTION. 585 to an action for infringement, proof that the al- leged inventor " had surreptitiously obtained a patent for the discovery of another person." [Repealed July 4th, 1836.J Act approved July 4th, 1836. Sec. 15. This section provides, as a defence to an action for infringement, proof that the pat- entee " had surreptitiously or unjustly obtained the patent for that which was, in fact, invented or discovered by another, who was using rea- sonable diligence in adapting and perfecting the same." [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sbc. 61. This section provides, as a defence to an action for infringement, as follows : " Second. That he [the patentee] had surrep- titiously oc unjustly obtained the patent for that which was, in fact, invented by another, who was using reasonable diligence in adapting and perfecting the same." [Repealed June 23d, 1874.] Act approved June 22d, 1874. Sec. 4930. This section provides, as a defence to an action for infringement, as follows : " Second. That he [the patentee] had surrep- titiously or unjustly obtained the patent for that which was, in fact, invented by another, who was using reasonable diligence in adapting and per- fecting the same." [For statutory provisions with reference to priority of invention, in interference iDTOceedings, see " Interference" in the Patent Acts.] Cases. 1. " The first inventor is entitled to the benefit of his invention if he reduce it to practice and obtain a patent therefor. A subsequent inventor cannot, by obtaining a patent therefor, oust the first inventor of his^right. ' ' Woodcock v. Parker et al., 1 Gall. 437.— Story, 1813. 2. The law gives the right, as among invest- ors, to him who is first in time. Lowell v. Lewis, 1 Mason, 182.— Story, 1817. 3. An allegation that the plaintiff surrepti- tiously obtained the patent for the invention of another, must be supported not only by proof of conception by that other, but by proof that he did not concur in the getting of the patent by plaintiff. Dixon v. Mo^yer, 4 Wash. 68.— Wash. 1831. 4. If, through a subsequent inventor, the in- vention comes into common use, there would be no quid pro quo, no price, for the monopoly. Pennock et al. v. Dialogue, 2 Peters, 1.— Sup. Ct. 1829. 5. A prior undisclosed invention will not pre- vent a subsequent inventor from taking a valid patent. Whitney et al. v. Emmett et al., 1 Bald. 308. — HopKiNSON & Baldwin, 1831. 6. An invention is complete as soon as it is capable of successful operation. Burrows v. Wetherill, 1 MacArthur's P. C. 315. — Moksell, 1854. 7. A claim that plaintiffs' patent is void, be- cause the invention was originally communicated to the patentee by another, can only be substan- tiated by proof that the communication was such as to enable the patentee to put the invention in practice without the exercise of the inventive faculty. Alden et al. v. Dewey et al. , 1 Story, 336.— Story, 1840. 8. The patentee's oath of invention counter- balances the oath of a single witness that he com- municated the invention to the patentee. — /b. 9. "If the invention be the mere speculation of a philosopher or mechanician in his closet, and he takes no steps toward obtaining a patent,- but keeps his invention secret, and another per- son, who is an original but subsequent inventor of the same thing, obtains a patent for it and brings it into \ise, it has been held, both in Eng- land and in this country, that the patentee in a suit at law is to be considered as the first in- ventor. " Heath v. Hildreth, 1 MacArthur's P. C. 12.-CRANCH, 1841. 10. " It cannot be just that the prior inventor, who is maturing his invention and preparing to make application for a patent at a reasonable time, should be defeated by a subsequent inventor who first obtains a patent." — lb. 11. " Where the invention is not of a mere philosophical speculation, abstraction, or theory, but of something corporeal, something to be manufactured, the applicant need not show that lie has reduced his invention to practice other- wise than by filing his specification and furnish- ing drawings and a model, as required by the statute, where the nature of the case admits of . drawings or of a representation by a model." — Lb. 12. ' ' No person, who is not at once the first as well as the original inventor, by whom the invention has been perfected and put into actual use, is entitled to a patent. A subsequent in- ventor, although an original inventor, is not en- titled to a patent. If the invention is perfected and put into actual use by the first and original inventor, it is of no consequence whether the invention is extensively known or used, or whether the knowledge of use thereof is limited to a few persons, or even to the first inventor himself." Reed v. Cutter et al., 1 Story, 590. —Story, 1841. 13. " In a race of diligence between two in- 58G PEIOR INVENTION. dependent inventors, lie who first reduces his in- vention to a fixed, positive, and practical form, would seem to be entitled to a priority of right to a patent therefor. . . Providing that is the case, he wlio invents first shall have the prior right, if he is using reasonable diligence in adapt- ing and perfecting the same, although the second inventor lias, in fact, first perfected the same and reduced the same to practice in a positive form. ' ' —n. 14. He who is an original and first inventor, and has his invention perfected and reduced to practice, is not deprived of his right to a patent in favor of a second and subsequent inventor simply because the first invention was not then known or used by other persons than the in- ventor, or not known or used to such an extent as to give the public full knowledge of its exist- ence, —lb. 15. " The law is, that whoever first perfects a machine is entitled to the patent, and is the real inventor, although others may previously havg ■had the idea and made some experiments toward putting it in practice." Washburn et al. v. Qould, 3 Story, 133.— Story, 1844. 16. Although a party may be prior in the date of making his invention, he " must proceed to perfect and patent it with due diligence, other- wise a succeeding inventor, who is more diligent in perfecting his, though not in getting out a patent, may prevail against or defeat him." Aliens. Blunt et al., 2 W. & M. 121.— Wood- bury, 1846. 17. " Reducing to practice differs from bring- ing into use. There is no law requiring the ap- plicant to reduce his invention to actual use be- fore he can obtain a patent. On the contrary, the use of the invention before obtaining a pat- ent is one of the reasons for refusing it. An in- ventor has reduced his invention to practice when he has so described it on paper, with such draw- ing or model as to enable any person skilled in the art to make and use the same. He must show that it is practicable, and the manner in which it may be used. But it is not necessary that he should do this until he has perfected' his invention and is ready to apply for a. patent. He may have conceived the idea years ago, but. is not obliged to furnish drawings or model un- til he makes his application. " Perry V. Cornell, 1 MacArthur's P. C. 68.— Cranch, 1847. 18. The requirement of reasonable diligence in adapting and perfecting an invention "is only applicable to the case of a patent surreptitiously or unjustly obtained, while the first inventor was using reasonable diligence in adapting and per- fecting his invention— not to the case of conflict- ing applicants before any patent is granted. It is one of the pleas which the defendant, who is a supposed violator of the surreptitious patent, may plead ; and, if pleaded, it may be necessary for the defendant to show, in order to vacate the patent, that he was using reasonable diligence, etc., when the patent was obtained. But before a patent is granted to any one for the invention, there is no law that requires the first inventor to disclose his invention within any limited time before application for a patent ; and there is no limitation, unless the lapse of time be sufficient, to show an abandonment of the invention, which is a question for the jury and not for the Com- missioner ; nor does the priority of application for a patent decide the priority of the inven- tion. ' ' — lb. 19. Where it is proved that a person con- structed a machine embodying a patentable im- provement at a certain date, the presumption arises that such person was the first inventor of such improvement. Atkinson v. Boardman, 1 MacArthur's P. C. 80.— Cranch, 1847. 20. Although one inventor may be anterior to another in point of time, yet, if he does not re- duce it to practical operation and then neglects it for years, a later inventor is entitled to the patent. Parklmrst \ . Kinsman et al. , 1 Blatch. 488.— Nelson, 1849. 21. "It is not enough to defeat a patent al- ready issued that another conceived the possi- bility of affecting what the patentee accom- plished. To constitute a prior invention, a party alleged to have produced it must have proceeded so far as to have reduced his idea to practice and embodied it in some distinct form. It must have been carried into practical operation ; for he is entitled to a patent, who, being an original in- ventor, has first perfected the invention and adapted it to practical use. Crude and imper- fect experiments, equivocal in their results, and then given up for years, cannot be permitted to prevail against an original inventor who has per- fected his improvement and obtained his patent. ' ' —lb. 23. When a patent is attacked on the basis of alleged prior inventions, " it is no matter whether those prior inventions were patented or not, if they existed, if they were discovered, if they were used." Failure to take patent may be some evidence that the prior inventions were not considered valuable. Whether the reliance is on prior invention and not on prior use, " it is of no consequence whether it is abandoned or not, but whether it was the prior invention." Colt V. Mass. Arms Co., 1 Pish. P. C. 108. — Wood- bury, 1851. PEIOK INVENTION. 587 33. " The date of the invention is the date of tlie discovery of the principle involved, and the attempt to embody it in some machine, not the date of the perfecting of the instrument." — /*. 24. " The party cannot get a patent until he perfects it in some sense of the word — that is, un- til he goes on and makes improvements to render it practical and useful, for it is one element of a machine necessary to sustain a patent, that it is useful." — lb. 35. " Such is the law that the date of the in- vention becomes very material, because it is the earliest in date that is then to succeed." — lb. 36. Although an interference contestant may have delayed prosecuting his invention, a lack of means will excuse the delay. Yearsley v. Brookfieldet al., 1 MacArthur's P. C. 193.— MOKSELL, 1858. 37. " Wliere the invention is not of a mere philosophical speculation, abstraction, or theory, but of something corporeal — something to be manufactured— the applicant need not show that he has reduced his invention to practice otherwise than by filing his specification and furnishing drawings and a model, as required by the statute, where the nature of the case ad- mits of drawings or of a representation by a model." New England Screw Co. v. Sloan, 1 MacArthur's P. C. 310.— Moksbll, 1853. 28. He who first conceives an improvement, and uses reasonable diligence to perfect it, is en- titled to a patent over him who subsequently conceives but first reduces to practice. Marshall V. Mee, 1 MacArthur's P. C. 239.— Bunlop, 1858. 29. "Along course of mere fruitless experi- ments to reduce the principle to practice would not be sufficient to prevent a subsequent original inventor, who had perfected his invention with- out knowledge of tlie prior inventor, from his right to a patent ; but, on the other hand, where a prior invehtor has been using reasonable dili- gence to pOTf ect and adapt his invention to prac- tical use, his right will be reserved and protected, although his success may not have been perfect. '■' McCormick v. Howard, 1 MacArthur's P. C. 338.— MoRSELL, 1853. 80. " If there has preceded the invention, for which a patent has been obtained, another inven- tion of the same kind, and that has been perfected within the meaning of the patent law, so as to be of practical utility, and not to end in mere experiment, then it has anticipated the subse- quent discovery or invention, and such inventor cannot be entitled to the monopoly or exclusive privilege that is claimed by the patent." Howe et al. V. Underwood et al., 1 Pish. P. C. 160. — Sprague, 1854. 31. "To constitute a prior invention, the party alleged to have made it must have pro- ceeded so far as to entitle himself to a patent in case he has made an application." Allen v. Hunter, 6 McLean, 303.— McLean, 1855. 33. " If both the plaintiff and defendant are inventors of the thing claimed by them respec- tively, the one who first perfected his inven- tion is protected by the law." " A general re- mark, that he had accomplished his object, with- out particularizing what he had invented or dis- covered, is not satisfactory. But a statement of the thing invented or discovered should be con- sidered as evidence, so far as it agrees with the patent subsequently obtained, or with the work claimed to have been perfected." — lb. 83. " There is no law requiring the applicant to reduce his invention to actual use before he can obtain a patent. An inventor has reduced his invention to practice when he has so de- scribed it on paper, with such drawings or mod- els as to enable any person skilled in the art to make and use the same. He must show that it is practicable, and the manner in which it may be used ; but it is not necessary that he should do this until he has perfected his invention and is ready to apply for a patent. He may have conceived tlie idea years ago, but is not obliged to furnish drawings or model until he makes his application." Stepliens et al. v. Salisbury, 1 MacArthur's P. C. 879.— Morsell, 1855. 34. As to "the diligence, provided for by Sec- tion 15 of the Statute of 1836, " it has application to the case of a prior inventor by way of defence, where a subsequent inventor has obtained a pat- ent for the same invention surreptitiously and directly only in such a case, or where it has ap- peared that analogous principles are involved, and then by an equitable construction of the rule." — lb. 35. " The, circumstance that a person has had an idea of an improvement in his head, or has sketched it upon paper — has drawn it, and then gives it up— neglects it— does not, in judgment of law, constitute, or have the effect to constitute him a first and original inventor. It is not the person who has only produced the idea that is entitled to protection as an inventor, but the person who has embodied the idea in a practical machine, and reduced it to practical use. He who has first done this is the inventor who is entitled to protection." Winans v. JV. T. & Ha/rlem M. E. Co., 4 Fish. P. C. 1.— Nelson, 1855. 36. " If a person has some vague idea of the 588 PRIOE INVENTION. application of the principle which another party- has made available— if he makes numerous trials and long-continued experiments— if those trials and experiments never result in such a knowledge, upon his part, as will enable him to put in successful practice the idea of which he has this vague and undefined notion, he has never become an inventor in the sense of the patent law ; he has never embodied the princi- ple so as to make it available for practical use ; and the party who embodies the principle, and makes it available for practical use, is the party who is entitled to a patent, and to protection under the patent law." Ransom et at. v. N. T., 1 Fish. P. C. 3o3.-Hall, 1856. 37. "If the plaintiffs did not use reasonable diligence to perfect the invention patented after the idea of it was first conceived, and in the mean time other persons not only conceived the idea, but perfected the invention, and practically applied it to public use, before the invention of the plaintiffs had been so far perfected that it could be applied to practical use, the plaintiffs' patent is void, because they were not the first and original inventors of the thing patented. And if the plaintiffs, after they had perfected their invention, unreasonably delayed their ap- plication for a patent, and other persons, before such application was made, actually perfected and applied the same invention to practical use, and gave the knowledge thereof to the public, and the plaintiffs, after the knowledge of such subsequent invention or discovery, and its public use, failed to make objection, and to apply, without unreasonable delay, for a patent for their invention, they cannot sustain their patent, because they failed to give to the public that consideration for the grant of exclusive privi- leges upon which all valid patents must bo based." — lb. 38. Under our statute the invention must be new at the time of the original discovery, not, as under the English law, at the time of appli- cation for patent. Wintermute v. Eedington, 1 Fish. P. C. 239.-WILS0N, 1856. 39. Where a party makes a new machine the presumi>tion is that he is the inventor thereof. Hill V. Dunklec, 1 MacArthur's P. C. 475. — MoR- SELL, 1857. 40. " An invention being an intellectual proc- ess of conception, for the purpose of showing who, in point of time, is the prior inventor, he who first makes it known sufficiently by de- scribing it in words or drawings will be consid- ered to be the first discoverer, and vested with an inchoate right to its exclusive use, which he may embody, perfect, and make absolute by proceeding to mature it in the manner which the law requires." — lb. 41. The introduction in evidence of a patent carries the date of an invention back only to the date of filing the application for that patent. Johnson v. Moot, 1 Fish. P. C. 351. — Spragtte, 1858. 43. If, in 1848, a certain inventor had perfected his invention as shown in his patent of 1858, or, if not then perfected, he " used reasonable dili- gence to perfect it, then he had a right to have it incorporated into his patent, and to supersede those who had intervened between his first in- vention or discovery and the subsequent taking out of his patent. If he has not perfected it, and did not use due diligence to carry it into effect, and, in the mean time, before he got his patent, somebody also had invented and used, and incorporated into a practical, useful ma- chine, that mode of feeding, then he could not, by subsequent patent, appropriate to himself what was thus embraced in the former ma- chine." — lb. 43. ' ' Although the party has a right to keep his inchoate title to his invention concealed from the public as long as he pleases, yet, when he desires to perfect his right by a patent, he must proceed with vigilance to secure his protection by as early an application as practicable ; for, although no particular time is limited for the application for a patent, by the statute, yet it is very clear, according to a fair construction of its spirit and meaning, that it ought to be done in a reasonable time ; otherwise, the right may bo lost by the laches of the party. What is or is not a reasonable time depends on the circum- stances of each case." ElUtliorp v. Robertson, 1 MacArthur's P. C. 585.— Morsell, 1858. 44. " It is certainly true, that while the origi- nal inventor chooses to deppnd upon his own secret contrivance — his inchoate right of inven- tion—to secure him in the exclusive use and en- ioyment thereof, he has a right to do so, and no one can complain of being injured ; ^et, when he finds it necessary to resort to the public for thdr aid to perfect his inchoate right by a pat- ent, a new and different condition of rights ara to take place, limited by statute, in the nature of a statutory compact with mutual considera- tions — a guid pro quo offered by the inventor — the terms of which compact, according to the spirit and mode thereof, must be fulfilled — on the one part, fourteen years' exclusive right, se- cured by patent ; on the other part, a new and useful invention, to become public without re- striction at the expiration of that term. The main object with the Legislature was to bring PEIOE INVENTION. 589 inventions early into public and unrestricted use ; and this, of course, forming an essential part of the consideration, the public has a right to the knowledge as early as possible, consist- ently with the rights of the inventor in using such reasonable diligence on his part as may be necessary in adapting and perfecting his inven- tion. " — lb. 45. " It is not so much he who made and per- fected the first machine or instrument as he who may appear, from the evidence, to have been the first to have conceived the idea, and so described it by words or drawings as to have been suffi- cient to enable a skilful workman to bring it into useful, practical operation ; for such a person shall be said to have made the first claim, and will be protected against the claim of any subse- quent inventor who may have been the first in adapting a machine or instrument to the inven- tion, provided . such first discoverer has been using due diligence in effecting the same end, and that, although he may have been unsuccess- ful in some of his experiment?, if by following them up he at length succeeds. " Davidson -v. Lewis, 1 MacArthur's P. C. 599. — Morsbll, 1858. 46. The defendants' patent may be subsequent in point of time to that of plaintiffs, but if the defendants be the first inventors they cannot be held to be infringers of plaintiffs' patent, es- pecially when defendants had a caveat on file at time of plaintiffs' application, and no notice of the interference was given defendants. Phelps et al. V. Brown et al. , 4 Blatch. 363.-— Nelson, 1859. 47. " The object of the patent laws was to en- courage useful improvements reduced to actual practice. Before a patent can be granted it must be made to appear that the party applying for it was the original inventor of the thing sought to be patented, and that he has reduced the same to practice. To defeat a patent which has been issued, it is not enough that some one, before the patentee, conceived the idea of effect- ing what the patentee accomplished. To con- stitute such a prior invention as will avoid a pat- ent that has been granted, it must be made to appear that some one, befqre the patentee, not only conceived the idea of doing what the pat- entee has done, but also that he reduced his idea to practice, and embodied it in some prac- tical and useful form. The idea must have been carried into practical operation. The mat- ing of drawings of conceived ideas is not such embodiment of such conceived ideas into prac- tical and useful form as will defeat a patent which has been granted. Experiments, equivo- cal in their results, and given up for years, will not be permitted to prevail against an original inventor who has reduced his invention to practice, and has, without fraud, obtained a pat- ent. " EUithorpe v. Bobertson et al., 4 Blatch. 307.— Ingersoll, 1859. 48. It seems that in an interference proceed- ing in court, the bill must allege that the paten- tee has surreptitiously or unjustly obtained his patent for that which was, in fact, invented or discovered by the complainant, who was using reasonable diligence in adapting and perfecting the same. — lb. 49. " In the sense of the patent laws the fact of invention, and not a knowledge of the degree of its utility, is the pi-oper subject of inquiry. If a party omit to test the value of his invention, and fail to bring it into use, and himself remain ignorant of the extent of its value, if it be the same with that of a subsequent discoverer, he is yet entitled to a patent over the latter. ' ' Farley V. National Steam Gauge Co., 1 MacArthur's P. C. 618.— Merrick, 1859. 50. " To constitute a perfected invention which will entitle a party to a patent, it is not nec- essary that he should have actually constructed the machine which is the subject of his inven- tion. If, having conceived a valuable idea, he has manifested it before the world in any form which evidences the completeness of the idea, and which is su.licient, wlien communicated to others, to enable those skilled in the particular art to reproduce his invention, he has done enough to entitle himself to a patent, and this, whether such evidence consists of written de- scription, drawing, models, or a complete ma- cliine. ' ' — lb. 51. Wickersham made an application for pat- ent for improvement in sewing-machines Febru- ary 13tli, 1850. On the 30th the papers were returned to him for correction. March 15th he returned amended papers. April 5th, 1850, the papers were returned to him for further amend- ment. May 38th, 1851, he withdrew his appli- cation and took back the twenty dollars allowed by law. Prom that time to October 2d, 1858, he made no movement in the matter and then filed another application. Meanwhile Singer procured patents covering the same subject-mat- ter and put the improvement into use. During this interval of delay Wickersham applied for five different patents in this country and one in England, and made a visit to England in 1854. Wickersham was held to have abandoned his invention ; two years' public use was found against him, and priority of invention was found in favor of Singer. Wickersham, v. Singer, 1 MacArthur's P. C. 645.— Merrick, 1859. 590 PEIOR INVENTION. 53. " The design of the law is that the earliest knowledge and use of the invention by the pub- lic, consistent with just and reasonable rights of the inventor, should be obtained, and protection will not be given from dangers happening from unnecessary delays on the part of the inventor after he has perfected his invention and before his application for a patent ; as, [among others], if in such interval a subsequent discoverer of the same invention should put the public in pos- session of the knowledge and use thereof, how could such inventor, lying by for years, and suffering such public use by another, be in a condition to offer a quid pro quo to the public — how could he say that it was not known to others ? And, further, the spirit of the objection being that the invention is known by others and in public use, how can it be material whether the person so making it known and putting it into public use be a patentee or not ?" Savary ei al. V. Lauth, 1 MacArthur's P. C. 691.— Mob- SELL, 1859. 53. As between him who suggests an improve- ment and him who, hearing that suggestion em- bodies it, the former is the. inventor. Stearns v. Bams, 1 MacArthur's P. C. 696. — Dunlop, 1859. 54. The improvement in dispute appertained to cook-stoves. Belson discovered it, perfected it, and applied it to use in his kitchen in the fall of 1853 ; in the year 1858 Spear patented the same improvement without knowledge of Bel- son's invention ; Belson applied for a patent May 25th, 1859. Belson claimed that his de- lay was caused by his poverty, but the claim was inconsistent with other proved facts. Prior- ity of invention was awarded to Spear. Spear V. Belson, 1 MacArthur's P. C. 699.— Dunlop, 1859. 55. " When the idea first enters into the mind of the inventor, it, is, almost necessarily, in a crude and imperfect state. His mind will natu- rally dwell and reflect upon it. It is not until his reflections, investigations, and experiments have reached such a point of maturity that he not only has a clear and definite idea of the principle and of the mode and manner in which it is to be practically applied to useful purposes, but has reduced his idea tp practice, and embodied it in some distinct form, that it can be said that he has achieved a new and useful invention. That is the real time of his invention, though it may be months or years before he obtains a patent for it. Indeed, he would be none the less an inventor though he never obtained a patent for it." MaUlieios v. Skates et al., 1 Fish. P. C. 603.— Jones, 1860. 56. A person made a sort of model of an im- provement in 1853 or 1854 ; he tried some ex- periments in the same line in 1857 ; nothing more was heard of it again until November, 1859, subsequent to the issue of a patent for the same to another person. The latter was held entitled to his patent. Coxe v. Qriggs et al., 1 Bissell, 363.— Drummond, 1861. 57. " It is the right and privilege of a party, when an idea enters his mind in the essential form of invention— Inasmuch as most inventions are the result of experiment, trial, and effort, and few of them are worked out by mere will — to perfect by experiment and reasonable diligence his original idea, so as not to be deprived of his skill and labor by a prior patent, if he is the first inventor. But there must be what we would consider reasonable diligence looking at all the facts of the case. " — lb. 58. "It is necessary, in order to prevent a man from having the benefit of his patent, that another person should first have discovered the thing and reduced it to actual practice. "—JJ. 59. When a patentee attempts to carry the date of liis invention back of the date of his applica- tion for patent, it is " incumbent upon him to prove by competent and sufficient evidence that he made the invention at the period suggested, and that he reduced the same to practice in the form of an operative machine, ' ' and if he fails to prove either of the elements of the proposi- tion, the verdict should go against him. John- son V. Boot, 3 Clifford, 108.— Clippokd, 1863. 60. For an example of an invention held not to have been followed up with reasonable dili- gence, see — . lb. 61. " He is the first inventor, in the sense of the patent act and entitled to a patent for his invention, who has first perfected and adapted the same to use, and . . . until the invention is so perfected and adapted to use, it is not patent- able under the patent laws,'' . . . "subject to the qualification, that he who invents first shall have the prior right, if, as is prescribed in Sec- tion 15 of the Patent Act, he is using reasonable diligence in adapting and perfecting the same within the meaning of that provision." White et al. V. Allen, 3 Clifford, 224.— Clifford, 1863. 62. " Where an invention is . . . voluntarily broken up and laid aside, without any control- ling impediment in the way of an application for a patent, . . . and another in the mean time invents the same thing, without any knowledge of that which is so suspended, and reduces the same to practice, applies for and takes out his patent, and introduces the patented invention into public use, ... he must be regarded as PEIOR INVENTION. 591 the original and first inventor of the improve- ment. Federal courts have everywhere held that an Inventor who has first actually perfected his invention, will not, if he has exercised good faith, be deemed to have surreptitiously or un- justly obtained a patent for that which was, in fact, first invented by another, unless the latter was at the time using due diligence in adapting and perfecting what he had accomplished." — lb. 63. A reduced the invention in dispute into working form in April or May, 1858, and ap- plied for patent in January, 1859, which appli- cation was rejected. The application was after- ward renewed and patent granted December, 1860. B invented January, 1859, and applied for patent April, 1860. A prevailed. Smith et al. V. Allen, 2 Fish. P. C. 573. —Lowell, 1865. 64. Complainant's patent was dated May 5th, 1863. Defendant defended under a reissued patent of June 38th, 1864, based on an original patent dated May 14th, 1861. The original patent by itself was obscure and ambiguous, but the reissued patent was clear and intelligible. The issue was priority of invention on these facts, and was decided in favor of defendant. House V. Young, 3 Fish. P. C. 335.— Shbkman, 1867. 65. The improvement in question, an amalga- mating barrel, was conceived by complainants' patentee early in 1863, and reduced to practice by him in the summer of 1863, and application for patent was made in November, 1863. The inventor, put forward by defendant, conceived of the improvement in August, 1863, and reduced it to practice in December, 1863. Complainants' patentee was held to be the prior inventor. Brodie etal. v. Ophir Silver Mining Co., 5 Saw- yer, 608.— Field, 1867. 66. "The patent is prima facie evidence that the patentee was the first inventor. Whoever controverts and denies his claim in this respect has the burden of proof upon him to establish the contrary. This is not accomplished by show- ing the construction of the improvement before the patent issued ; it must be shown that the construction preceded the invention of the pat- entee—that is, before the conception of the im- provement was applied in practice." — lb. 67. " Whoever first perfects a machine is en- titled to the patent, and is the real inventor, al- though others may have previously had the idea and made experiments toward putting it in practice. He is the inventor, and is entitled to the patent, who first brought the machine to per- fection and made it capable of useful operation. Agawam Co. v. Jordan, 7 Wall. 583.— Sup. Ct. 1868. 68. "Where a person has discovered an im- proved principle in a machine, manufacture, or composition of matter, and employs other per- sons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discov- eries ancillary to the plan and precoiiceived de- sign of the employer, such suggested improve- ments are in general to be regarded as the prop- erty of the party who discovered the improved principle, and may be embodied in his patent as a part of his invention. " Suggestions from another, made during the progress of such experiments, in order that they may be sufiicient to defeat a patent subsequently issued, must have embraced the plan of the im- provement, and must have furnished such in- formation to the person to whom the communi- cation was made, that it would have enabled an ordinary mechanic, without the exercise of any ingenuity and special skill on his part, to construct and put the improvement in successful operation. "Persons employed, as much as employers, are entitled to their own independent inven- tions ; but, where the employer has conceived the plan of an Invention, and is engaged in ex- periments to perfect it, no suggestions from an employe, not amounting to a new method or ar- rangement, which, in itself, is a complete inven- tion, is' sufficient to deprive the employer of the exclusive property in the perfected improvement. But where the suggestions go to make up a com- plete and perfected macliine, embracing the sub- stance of all that is embodied in the patent sub- sequently issued to the party to whom the sug- gestions were made, the patent is invalid, because the real invention or discovery belonged to an- other. " — lb. 69. Dundas, complainant's patentee, took a patent in 1859 for a cultivator. He had the first conception thereof in June or July, 1850. He began the construction of such a cultivator in the winter of 1850 and 1851, and ironed it about June 1st, 1851 ; made application August 1st, 1851. Marsh, the contesting inventor, described the improvement in question to other persons in 1849, gave directions to a mechanic for con- structing one in 1851, tried it in March, 1851, made application for patent July 1st, 1851, which application was rejected and never successfully prosecuted. Marsh was held to be the prior in- ventor. Sayles v. Hapgood et al.,'Z Bissell, 189. , — Drtjmmond, 1869. 70. ' ' Original and first inventors are entitled to the benefit of their inventions if tliey reduced the same to practice, and seasonably comply with the requirements of the patent law in procuring 592 PEIOE INVENTION. letters-patent for the protection of their exclusive rights. Crude and imperfect experiments are tiot sufficient to confer a right to a patent ; but, in order to constitute an invention, the party must liave proceeded so far as to have reduced his idea to practice, and embodied it in some dis- tinct form." Seymour v. Osborne, 11 Wall. 516. —Sup. Ct. 1870. 71. "He is the first inventor in the sense of the patent law, and entitled to a patent for his invention, who first perfected and adapted the same to use, and it is well settled that until the invention is so perfected and adapted to use it is not patentable under the law." — lb. 72. The process in dispute being the filtering of coal-oil through bone-black, it was found that complainant's patentee invented the process in 1861, that the contesting inventor invented the same in 1863, and complainant's inventor took jjatent in Juiie, 1865. Complainant's inventor was held to be the prior inventor. National Mltering Oil Go. v. Arctic Oil Co., 8 Blatch. 416. — Blatchford, 1871. 73. Complainant's patentee completed his in- vention in the first part of November, 1864, and filed application for patent January 16th, 1865. The contesting inventors did not make the article successfully until the early part of 1865. The court said that, although complainant's inventor might have started later in his experiment than the contesting inventors, yet he first made and completed a successful invention and followed it up by patent. " In the race of diligence he must be held to be the first inventor. " Taylor v. Arclier et al., Blatch. 315. — Blatchfobd, 1871. 74. Complainants' patent was for improved defensive armor for ships and other batteries, the patent being granted April 14th, 1863. De- fendant set up prior publication in 1861. The idea of the improvement occurred to the inventor in 1856, at which time he wrote to an admiralty board desiring such a construction tried, which desire was refused. In 1858 he tried experi- ments with boards and sheet-iron and a revolver, with a view to testing the idea in a small way. He did not make a model till 1861. It was hold that he did not carry his invention back to a time prior to the publication. Webb et al. v. Quintard, 9 Blatch. 353.— Blatchford, 1873. 75. To constitute a person a prior inventor as regards a printed publication, he must, before the publication, " have proceeded so far as to have reduced his idea to practice and embodied it in some distinct form. " — lb. 76. Where one person announces to another that he desires a paper of certain quality gotten up, and the second person proceeds to get it uj), that does not make the first person an Inventor of the product. Union Paper Collar Co. v. Van DevMn et al., 10 Blatch. 109. — Blatchpord, 1873. 77. A defendant must make out the defence of prior invention, by satisfactory proof, in order to prevail. Fisk ct al. v. Church, 5 Fish. P. C. 540. — Blatchpord, 1872. 78. "A patentee, whose patent is assailed upon the ground of want of novelty, may show, by sketches and drawings, the date of his inceptive invention, and, if he has exercised reasonable diligence in " perfecting and adapting ' it, and in applying for his patent, its protection will bo carried back to such date ; and in a race of dili- gence between rival inventors, the one who first perfects an invention, and embodies it in a dis- tinct form, is entitled to priority ; but . . . this" cannot " be accorded to one who has conceived the idea of an invention, and has sketched it on paper, but has done nothing more in reference to it for a period of five years, as against the patent of an independent though subsequent in- ventor. Reasonable diligence in ' perfecting and adapting ' the invention, is essential to the efficacy of such a claim. ' ' Beeves v. Keystone Bridge Co. et al., 9 Phil. 368.— McKennan, 1873. 79. "Independent of this provision [the last one stated], he is entitled to priority of right to a patent who first reduces his invention to a fixed, positive form, adapted to practical use. ' ' —lb. 80. ' ' It must ... be considered as an estab- lished rule that illustrative drawings of conceived ideas do not constitute an invention, and that unless they are followed up by a seasonable ob- servance of the requirements of the patent laws, they can have no effect upon a subsequently granted patent to another."— J6. 81. Making sketches of a proposed invention, and then letting the matter lie for five years, and until after another has invented and reduced to pi-actice, will not permit the former party to prevail over the latter. — lb. 83. Where priority of invention is set up, and the actions of the alleged prior inventor are in- consistent with his claim, they will overbear his claim. Gear v. Holmes etal., 6 Fish. P. C. 595. — Sheplet, 1873. 83. Where one party makes a model of an improvement and lays it aside, and meanwhile another party invents and reduces to practice, the second party is the prior inventor. Smith V. O'Connor, 2 Saw. 461.— Sawtek, 1873. 84. " When the patentee proposes to show PEIOR INVENTION. 593 that his invention is of a date prior to the time when he filed his original application, he takes upon himself the burden of proof, and to main- tain that theory as against another patented im- provement of the same construction and mode of operation, he must prove not only that he made his invention at the period claimed, but that he reduced the same to practice as an oper- ative machine. ' ' Jones et al. v. Seioall, 3 Clifford, 563.— Clifford, 1873. 85. Where, during the delay between alleged date of invention and subsequent application for patent, the alleged inventor is making and sell- ing the invention in the same city vphere the op- posing inventor makes and sells the same in- vention, the inventor first mentioned is charge- able with knowledge of the making and selling by the latter, and it naakes against the former's claim of priority. F)-ink v. Petry et al., 11 Blatch. 422.— Blatchpord, 1874. 86. A defendant cannot succeed uijon the de- fence of prior invention where the evidence is vague and unsatisfactory. Taylor v. Wood, 12 Blatch. 110.— Blatchfokd, 1874. 87. One Waters filed an application for patent on lubricators March 31st, 1868. One Taylor filed application for substantially the same thing April 21st, 1868. Both aiDplications were re- jected. Waters narrowed his claim and took a patent of limited scope, but Taylor persisted, and, upon appeal, secured a broader patent June 23d, 1868. Waters, learning of Taylor's broad patent filed a second application, went into in- terference with Taylor, on final appeal was ad- judged the prior inventor, and took patent June 29th, 1869. The court held that Waters's last patent must stand upon his .last application, and that the presumption of priority was in favor of Taylor. Pelton et al. v. Waters et al., 1 Bann. & Ard. 599. -Emmons & Swmo, 1874. 88. " If, intermediate the first and second ap- plication, the patentee manifests an actual inten- tion to abandon the first, his patent will have relation to the last one only. His actual inten- tion severs the proceeding. The law deems the first application terminated and as bearing no relation to the patent, which rests solely on the last one. "— /6. 89. The patent of complainant. Burrows, was for a furnace to be used in the manufacture of white oxide of zinc. Defendant's inventor, Wetherill, in September, 1852, filed a caveat for the improvement, dated July, 1852, and about that time erected an exclusively experimental furnace. Burrows made application for his pat- ent in October, 1852, and sought to carry back his invention to his exoeriments made in the early part of 1851. These experiments were un- successful, and so far as the furnaces of com- plainants and defendant were in confiict, Weth- erill was held to be the prior inventor. Burrows et al. V. Leliigh Zinc Co., 10 Phil. 263.— Mo- Kbnnan, 1874. 90. The making of a model does not constitute an invention in a contest over priority. Stilwell & Bierce M'fg Co. v. Cincinnati Gaslight & Coke Co. et al., 1 Bann. & Ard. 010. — Swing, 1875. 91. " Illustrative drawings of conceived ideas do not constitute an invention ; unless they are followed up by a seasonable observance of the requirements of the patent laws, they can have no effect upon a subsequently granted patent to another. But a patentee whose patent is assailed upon the ground of want of novelty, may show by sketches and drawings the date of his incep- tive invention, and, if he has exercised reason- able diligence in perfecting it, and in applying for his patent, its protection will be carried back to such date." Draper y . Potomska Mills Cm'- poration, 3 Bann. & Ard. 214.— Sheplet, 1878. 92. ' ' Upon a question of priority of invention, the presumption, in the absence of proof would be, that the application was of the same date as the patent ; but there the burden of proof would be upon a party claiming a prior application de- scribing the invention, to show it." Am. Dia- mond Bock Boring Co. v. SJieldon et al., 17 Blatch. 803.— Whbblbk, 1879. 93. In the absence of an application for pat- ent or other evidence, the date of an invention is to be taken to be the same as the date of the patent therefor. Webster Loom Co. v. Higgins et al., 15 Blatch. 446.— Whbei,er, 1879. 94. " The burden of proof rests upon the de- fendants to show, beyond any fair doubt, the prior knowledge and use set up ; but, where they have sustained that burden by showing such knowledge and use prior to the patent, the bur- den of showing the still prior invention claimed, by at least a fair balance of proof, must rest upon the plaintiff." — lb. 95. "A patentee whose patent is assailed upon the ground of want of novelty, may show, by sketches and drawings, the date of his inceptive invention, and if he has exercised reasonable dili- gence in perfecting and adapting it, and in ap- plying for his patent, its protection will be car- ried back to such date." Kneeland et al. v. 81ieriff-et al., 2 Fed. Eep. 901.— McKbnnan, 1880. 96. A patentee conceived of the invention, as evidenced by a sketch shown to his brother and explained in the fall of 1869. In the fall of 1869, 594 PEIOK INVENTION. or spring or summer of 1870, he experimented at making the invention, a cuspidor, and in 1870 made a large number experimentally. Some time in the fall or summer of 1870 he made one substantially in the afterward patented shape. It then took a year to get the necessary machin- ery to make them for market. He applied f or^ patent June 3d, 1871, which was granted Octo- ber 10th, 1871. Held, that the date of the in- vention was the fall of 1869 or early in 1870, and that he had exercised reasonable diligence in embodying the invention and perfecting it. U. 8. Stamping Co. v. Jewett et al., 18 Blatch. 469.— Blatchfobd, 1880. 97. Where it is sought to anticipate a patent by a prior invention, the case must be made out for the prior invention, " beyond all reasonable doubt," in order to succeed. — lb. 98. The testimony of a number of persons to circumstances of prior invention will not avail to prove it where they are shown to be mistaken as to dates incidentally brought in. — JJ. 99. Pope [complainant's patentee] conceived the invention in dispute during the week prior to November 6th, 1872 ; after April 25th, 1873, he prepared his application for patent ; he filed the application May 15th, 1873, and took patent July 1st, 1873. Previous to patent he made neither tests, models, nor experiments. After his patent was granted he set up a working model in 1875. or 1876. Hall [respondent's patentee] conceived about December 21st, 1872 ; in the latter part of April, 1873, attached the signal, set up in his shop, to a railroad track, and let it remain in operation for months. In December, 1873, he attempted to attach it regularly to a railroad and found a practical difficulty, which he surmounted February 14th, 1874 ; his patent was granted July 13th, 1875. Eespondent was held not to infringe, and, as a necessary conse- quence, that Hall was the meritorious inventor. Blectric R. R. Signal Co. v. Hall R. R. Signal Co., 6 Fed. Rep. 603.— Shipman, 1881. 100. By the court: " The patent having been granted to Pope, and now being attacked on the ground that the patentee was not the first in- ventor, it is not enough for the defendant to show that Hall had conceived the same idea, and had made drawings or models, and experiments with his models, but the defendant must estab- lish that Hall reduced what he conceived to practice in the form of an operative machine, and embodied it in some practical and 'useful form before Pope made his application, it being a fact in the case that Pope had not reduced his idea to practice before his application." — lb. 101. The inventor's shop was in Meriden, Conn., not far from the New York, New Haven & Hartford Railroad. He attached his signal apparatus to the "down" track, and had it operate the signal in hisshop. Held, to be a re- duction to practice. — lb. 102. " He is the first inventor who has actu- ally perfected the invention ; the qualification being that if the one first to conceive of the in- vention was at the time using reasonable dili- gence in adapting and perfecting the same, he is recognized as the first inventor, although the second to conceive may have been the first to re- duce to practice. "—J6. 103. " It is true that the determination of the fact of diligence is not to be reached by com- parison of the diligence of the two inventors. If Pope" [the first to conceive] '"was reasonably diligent in perfecting his idea, it does not matter that Hall was exceedingly diligent and made more rapid advances. "^/S. 104. Time spent upon other inventions is not the exercise of reasonable diligence as to the in- vention in hand. — lb. 105. It seems that in attempting to defeat a patent by prior invention, such prior invention must have " reached a practical result," before the patentee made his invention. Union Met. Cartridge Co. v. U. S. Cart. Co., 7 Fed. Rep. 344.— LowBLL, 1881. 106. " In the absence of other evidence of the dates of invention, the first application must be taken to represent the invention." Pennington etal. V. King, 7 Fed. Rep. 462.— Lowell, 1881. 107. Parshall took patent- -for a lubricator- May 22d, 1877. Renchard, an independent in- ventor, made complete drawing of the same de- vice August 10th, 1876, antedating Parshall's conception, but did not " reduce it to actual use until after it had been successfully accomplished by Parshall, nor until after the date of his pat- ent. This mere drawing, therefore, cannot be allowed to have the effect of depriving Parshall of his title of being the first and original in- ventor." Detroit Lubricator M'fg Co. v. Ren- cJiard et al., 9 Fed. Rep. 293.— Matthews, 1881. 108. A wife looked on and saw her husband take out a patent, as inventor, and sell interest in it to other parties. She then procured patent for the same thing as her own invention. She was held to be estopped from claiming that she was the inventor. Nat. Featlier Buster Co. v. Hibbard, 11 Bissell, 76.— Blodgett, 1881. 109. "Where a person has the desideratum of an invention in mind, and is striving and ex- perimenting to attain that end, he may adopt the suggestion of another and it may lead to sue- PRIOR .INVENTION. 595 cess, and he, and not thstt other, Is the legal in- ventor. — 11). 110. An earlier patent, to the same inventor, for an inferior form of device for the same pur- pose, is evidence, approaching the conclusive, that the later and perfected form was not in- vented first. James v. Campbell etal., 104 U. S. 356.— Sup. Ct. 1883. 111. By the court :" I ... do not find that Parshall completed and reduced to practice the invention in question before Gates made it. The idea was probably conceived by the two in- ventors nearly at the same time. Which was the earlier to conceive it, I cannot say, but Gates fully tested and proved and adapted it to use, while Parshall was trying to overcome a practi- cal diffiQulty of construction which the particu- lar form of his machine required him to over- come, and he did not succeed until years after Gates's machine had been in general use." Gates's patent antedated Parshall's six years. Priority found for Gates. Siehert Cylinder Oil Cap Co. V. Phillips Lubricator Co., 10 Fed. Bep. 677.— Lowell, 1883. 113. Wlien an inventor shows a drawing of his improvement to another, who then makes no claim to the invention, and subsequently advises against its adoption, such second person cannot afterward reasonably maintain a claim to such improvement. Webster Loom Co. v. Biggins et al., 105 U. S. 580.— Sot. Ct. 1883. 113. " An invention relating to machinery may be exhibited either in a drawing or in a model, so as to lay the foundation of a claim to priority, if it be sufficiently plain to enable those skilled in the art to understand it." — 74. 114. In making the defence of prior invention, it is inexplicable that defendants' alleged prior inventor should never have applied for a patent on the improvement, where he is connected with the art and accustomed to taking patents. — lb. 115. It seems that the defence of prior inven- tion must be specifically pleaded in the answer. —lb. 116. It seems that the decision of the Patent Cases in an interference is o-ea judicata between the same parties in court. Sawyer v. Miller et al., 4 Woods, 473 —Pardee, 1883. ■117. Complainant having brought suit on its patent, defendant submitted the evidence and decision in a Patent Office interference award- ing priority to defendant's patent. The court said : " While this decision is not conclusive here, it is nevertheless entitled to sufficient weight to cast the burden of proof on the plain- tiff." Wire Book Bewing-Maeh. Co. v. Steven- son, 11 Fed. Bep. 155.-Butlbe, 1883. j 118. Where, upon a question of prior inven- tion, a man's conduct is strongly inconsistent with the claims and evidence he produced, such conduct will overcome such claims and evidence.' Atlantic Works v. Prady, 107 U. 8. 193.— Sop. Ct. 1883. 119. By the court: " The question of priority having been determined in favor of complain- ants in that proceeding, [a Patent Office inter- ference] it is res adjwdicata as between the parties to it." Defence of want of novelty is still open to defendants. Shuter et al. v. Davit et al., 16 Fed. Bep. 564.— Wallace, 1883. 130. Lockwood claimed that in 1870 he dis- covered the principal idea of the afterward pat- ented invention ; made experiments afterward, and filed his application for patent June 34th, 1875, which was granted September 7th, 1875. Horton claimed that he made the discovery of the substance of the invention in 1873 ; made experiments afterward, and made his applica- tion for patent June, 1874, a long time after Lockwood had established the value of the pat- ented article by creating a demand for it in the public markets. Priority was awarded to Lock- wood. Lockwood V. Cleveland et al., 18 Fed. Bep. 37.— Nixon, 1883. 131. In November, 1873, Bogers made his conception, and placed his article on the market in the fall of 1877 ; he filed his application for patent February 37th, 1875. Stanwood began his experiments in the fall of 1873, or the follow- ing winter, and made the article in small quan- tities ; his customers did not like it, whereupon he gave up his attempts and did not resume them until the fall of 1876, after Bogers had obtained his patent. The Patent Office decided in Stanwood's favor, but the court decided in Bogers's favor. Gloucester Isinglass <& Olue Co. V. Brooks et al., 19 Fed. Bep. 426. — Nelson, 1884. 133. " It is well settled that the decisions of the Commissioner of Patents, though entitled to great weight on questions of priority, are not final between those who have been fully heard in the interference." — lb. 133. By the court; "This date being fixed, the burden was transferred to the complainant, to satisfy the court by proof as convincing as that required of the defendants that his invention antedated theirs. The rule is such cases is very strict. It is so easy to fabricate or color evi- dence of prior invention, and so difficult to con- tradict it, that proof has been required that does not admit of reasonable doubt. Where inter- ests so vital are at stake, where intervening years have made perfect accuracy well-nigh impossi-' 596 PRICE INVENTION. ble, where an event not deemed important at the time has 'been crowded from the memory by the ever-varying incidents of an active life, it is not difficult to imagine that even an honest man may be led erroneously to persuade himself that the fact accords with his inclination concerning it. "The evidence of prior invention is usually within the control of the party asserting it, and so wide is the opportunity for deception, arti- fice, or mistake, that the authorities are almost unanimous in holding that it must be established by proof clear, positive, and unequivocal ; noth- ing must be left to speculation or conjecture." Thayer v. Hart, Jr., et al., 23 Blatch. 339.— CoxB, 1884. 134. " Drawings may carry date of invention back, if reasonable diligence is shown. . . Making drawings of an idea is not invention, and is of no effect unless followed up. . . . Merely making drawings is not such an embodi- ment of invention as will defeat a subsequent patent." Odell et al. v. Stout et al., 39 O. Gr. 862.— Sage, 1884. 125. An inventor made a drawing of the ma- chine invented by him, but between the making of that drawing and his application for the patent there was an interval of a year,, and in the mean time patents for the same machine issued to an- other. It was held that the drawings could not be recognized as giving priority of invention as against said patents, whatever might be their efiEect upon the question of want of priority if these patents had not been issued. — lb. 136. Where, after an important invention has come into public use, and the patentee thereof has won fame and profit, another seeks priority of invention over the patentee, it is of the first importance to satisfactorily explain the reason of his delay. Am. Bell Telephone Co. et al. v. People's Telephone Co. et al., 33 Blatch. 531. — Wallace, 1884. 137. "Where [upon a question of prior in- vention] a witness falsifies a fact in respect to which he cannot be presumed liable to mistake, courts are bound, ' upon principles of law, mo- rality, and justice, to apply the maxim /afaw« in unofalsus in omnibus.' "—lb. 128. By the court: "Succinctly stated, the most favorably for the defendants, the case is this : one liundred witnesses, more or less, testify that on one or more occasions, which took place from five to ten years before, they think they saw this or that device used as a talking ma- chine. They are ignorant of the principles and of the mechanical construction of the instru- ments, but heard speech through them perfectly well, and through one set of instruments as well as the other. This case is met on the part of the complainants by proof that the instruments, which most of the witnesses think they saw and heard through, were incapable of being heard through in the manner described by them, and, further, that the man who knew all about the capacity of his instruments never attempted to use them in a manner which would demonstrate their efficiency and commercial value, but, on the contrary, for ten years after he could have patented them, and for five years after they were mechanically perfect, knowing all the time that a fortune awaited the patentee, and with no ob- stacles in his way, did not move, but calmly saw another obtain a patent and reap the fame and profit of the invention." — lb. 139. Defendants were found to have embodied the invention in dispute in one form in the early part of 1878. Complainant was found to have embodied the invention in another and improved form in the fall of 1878. Defendants claimed to have had drawings of the invention prior to the year 1878, but their conduct was held inconsis- tent with the claim. Defendants contended that they embodied the invention in the improved form prior to the fall of 1878, but their evidence was held unsatisfactory and inconclusive. De- fendants were held to be the inventors of that form of the invention which they embodied early in 1878, and complainant was held to be the in- ventor of that improved form of the invention which he embodied in the fall of 1878. Wooster V. Rill et al., 33 Fed. Rep. 830.— Wheeler, 1885. 130. In a contest over priority of invention, the invention will not take date from a time when the inventor had simply an idea that some means might be devised to accomplish certain practical results. Gibson et al. v. Scribner, 33 Fed. Rep. 840.— Webb, 1885. 131. ' ' In the absence of any explanatory facts, evidence offered to carry back the date of the invention to a date considerably anterior to the application for a patent, in order to save the patent from being defeated for want of novelty, should be critically examined." Walker- Olass Go. V. Souweine et al., 34 Fed. Rep. 603. — Wal- lace, 1885. 182. Where the defence of prior invention is set up " the burden of proving such a defence is upon the defendants. Any doubt respecting the evidence is fatal." Duffy y. Baynblds et al., 34 Fed. Rep. 855.— Nixon, 1885. 133. Where a man stands by and sees another make an application for a patent for an improve- ment, and afterward claims to be the inventor PRIOK INVENTION. 597 thereof, his conduct makes strongly against his chiim. JPraim, v. Keen, 35 Fed. Eep. 830.— Butler, 1885. 134. Where a person conceives of an improve- ment and employs a skilled person to embody it, the former is the inventor and not the latter. Yoder v. Mills, 35 Fed. Rep. 831.— McKenkan,' 1885. 135. A conceived of an invention and em- ployed B to embody it. As to a part of the in- vention B added a distinct feature conceived by himself. The court doubted A's right to claim the combination including the additional feature. —Ih. 136. "Where a man claims to have invented a telephone, but has waited fifteen years, mean- while having abundant means, and meanwhile having taken out patents on other things, his claim is below serious consideration. Am. Bell Tel. Co. v. Mol. Tel. Co., 33 Blatch. 353.— Wal- 1.ACE, 1885. 137. The invention in issue being an inside bottle-stopper, with a centrally located figure 8 handle-wire, the defendants' Inventor was shown to have made, anterior to the invention of com- plainant's inventor, an inside bottle-stopper with a double figure 8 handle-wire, each located peripherally on the stopper, which he did noth- ing with until after the other inventor reduced to practice the bottle-stopper, with the central figure 8 handle-wire. Complainant's inventor was held entitled to priority. Hutchinson v. Ev- erett et al., 36 Fed. Rep. 531.— Bi.odgett, 1885. 138. " Bell made the affidavit to his claim and specifications, as oj'iginally filed, on January 30th, and.. . . Gray '.s description of his invention embodied in his caveat was not written out till three or four days prior to February 14th, when it was filed." Bell's fifth claim, as originally filed, was : " ' [5] The method of, and apparatus for, transmitting vocal or other sounds, as herein described, by causing electrical undulations simi- lar in form to the vibrations of the air accom- panying the said vocal or other sounds, substan- tially as set forth.' " Thereof the court said : " In the fifth claim of the specification . . the applicant declares that his invention consists in this : in the discovery that vocal or other sounds, by being uttered or otlierwise communicated through a receiver, and by reason of their force being made to impinge upon an armature, im- part to it the vibrations of the air ; that these motions of the armature cause corresponding undulations in the electrical current, so that, at the end of the circuit, similar vibrations are given to another armature, and through it to the surrounding air, to the human ear. Thus, voice is communicated to the electrical current, and reproduced at the end of the wire in the air, and all this by reason of the discovered fact that vibrations in the air caused by sound are so similar to the undulations in the electrical cur- rent, that vocal sound, of whatever character It- self, may be passed from air to the electrical current, and delivered again through the air, by means of a^ receiving and delivering or emitting armature. The great discovered fact was, that the vibrations in the air are similar in form to the following and imparted electrical undula- tions, and that the undulations are similar to the ultimate vibrations. It follows that as are the vibrations so are the undulations ; whether gradual or sudden ; of whatever pitch or loud- ness ; whether constant or varying in pitch or loudness ; whether caused by a single or succes- sive sounds." Am. B. Telephone Co. v. Mtt. Imp. Telephone Co. et al., 37 Fed. Rep. 663, per curiam, 1886. 139. In an interference between one Taylor and one Tucker, " Taylor conceived the inven- tion in January, 1883, applied for his patent March 23d, 1882, which was issued April 3d, 1883 ; . . . Tucker conceived the invention in November, 1880 ; made drawings in January, 1881 ; commenced to make working drawings for a machine by October 1st, 1881, which were completed in December, 1881. A machine was ordered July 5th, 1882, was built in August, 188.0, and put into successful operation in Sep- tember, 1882. He applied for his patent July 20th, 1883." Tucker was held entitled to the patent. Huiel v. Dick, 28 Fed. Rep. 133.— Shipman, 1886. 140. " The question of reasonable diligence is of prime importance, and if the. first inventor postpones for an unreasonable period the prac- tical embodiment of his mental conceptions, and his application for a patent, the consequence of his laches may be fatal. ' ' — lb. 141. "That laches merely in applying for a patent, where there were no laches in otherwise perfecting the invention, may compel an invent- or to be deprived of his patent, another invent- or having meanwhile given the same invention to the public, is probably true." — lb. 143. When an inventor of a machine of an important character has been diligent in perfect- ing and reducing his invention to practise, and in attempts to bring his machine to the knowl- edge of the public, a delay in applying for his patent of nineteen months, after he completes his working drawings, and ten months after he completes his machine will not deprive him of a patent in favor of a later inventor. — lb. 598 PEIOE PATENT OR PUBLICATION. 143. A patent was granted to Ball and Case' in 1881. One Allison had made sketches of the invention in 1870, but did not apply for patent until after the issue of the patent to Ball and Case. Priority was awarded to Ball and Case. Penn. Diamond Brill Go. v. Simpson et al., 37 O. G. 318.— ACHESON, 1886. 144. "In the race of diligence between two independent inventors, he who has first perfect- ed and adapted his invention to actual use is en- titled to the patent. . . . But mere conception, which is not seasonably followed by some prac- tical step, counts for nothing against a subse- quent independent inventor who, having com- plied with the patent laws, has obtained the patent." — lb. 145. In a contest over priority of invention, conduct and letters inconsistent with the claim- ant's testimony have great weight. Lamson Cash By. Co. v. Osgood Cash Car Co. et al., 29 Fed. Rep. 310.— Colt, 1886. 146. When the question of priority of inven- tion is under consideration, it is incredible that a preliminary statement, filed by one of the con- testants in a Patent Ofiice interference, should fail to show correctly his earliest dates of con- ception, etc. Detroit Lubricator Co. v. Lunken- Jieimer, 38 O. G. 331.— Brown, 1886. 147. For a statement of the facts as regards Meucci's telephone, and the finding that he was not the prior inventor thereof over Bell, see — . Am. Bell Tel. Co. v. Olobe Tel. Co. et al., 31 Fed. Rep. 739.— Wallace, 1887. PRIOR PATENT OR PUBLICATION. " Prior Patent or Publication" in the Patent Acts. Act approved February 31st, 1793. Section 6. This section provides as a defence to an action for infringement proof that the patented thing " had been described in some public work anterior to the supposed discovery of the patentee." [Repealed July 4th, 1836.] Act approved July 4th, 1836. Sec. 15. This section provides, as a defence to an action for infringement, the fact that the pat- ented thing " had been described in some public work anterior to the supposed discovery thereof by the patentee ;" also that the patented thing " had before been patented or described in any printed publication. " [Repealed July 8th, 1870.] Act approved July 8th, 1870. Sec. 34. This section provides that a thing, in order to be patentable, must be " not patent- ed or described in any printed publication in this or any foreign country before his invention or discovery thereof." Sec. 61. This section provides as a defence to an action for infringement as follows : " Third. That it [the patented thing] had been patented or described in some printed pub- lication prior to his [the patentee's] supposed in- vention or discovery thereof . " [Repealed June 33d, 1874.] Act approved June 22d, 1874. Sec. 4886. This section provides that a thing, in order to be patentable, must be " not patent- ed or described in any printed publication in this or any foreign country before his [the pat- entee's] invention or discovery thereof . " Sec. 4930. This section provides as a defence to an action for infringement a& follows : "Third. That it [the patented thing] had been patented or described in some printed pub- lication prior to his [the patentee's] supposed in^ vention or discovery thereof." Cases. 1. A person cannot have two valid patents of different dates for the same invention. The earlier is a bar to the later. Odiorne v. Ames- bury Nail Factory, 3 Mason, 28. — Story, 1819. 3. A prior existing patent estops a second pat- ent to the same party for the same thing. Mor- ris V. Huntington, 1 Paine, 348. — Thompson, 1824. 8. A hose company's book of minutes is not a " public work." Pennock et al. v. Dialogue, 4 Wash. 538.— Wash. 1825. 4. Doubts as to whether a prior patent exhibits the device of the patent in suit is fatal to de- fence on that point. Brooks et al. v. Jenkins et al., 3 McLean, 433.— McLean, 1844. 5. A prior patent, in order to be a successful anticipation, must clearly describe the patented thing in issue. WasKburn et al. v. Gould, 3 Story, 133.— Story, 1844. 6. Where a patented invention proves to be of great utility, and defendant attempts to antici- pate the patent in issue by a prior patent, it is a matter of weight, making against defendant's position, that during a period of years no one constructed the patented thing from the prior patent. — lb. 7. A prior publication, in order to be a bar, must describe the afterward patented thing in all its material parts. Adams et al. v. Edwards et al., 1 Fish. P. C. 1.— Woodbury, 1848. 8. In pleading a book as a prior publication, the notice should specify the page or heading. Foote V. SilAy et al., 1 Blatch. 445. — Nelson, 1849. PRIOR PATENT OR PUBLICATION. 599 9. Where prior publication is set up by de- fendant, ' ' and the proof relied on is a descrip- tion of such structure, contained in a printed publication, such description must have been sufficiently full and precise to have enabled a mechanic to construct it, and must also have been, in all material respects, like that covered by or described in the plaintiff's patent." Parker v. Stiles, 5 McLean, 44. — Leavitt, 1849. 10. " An individual who has obtained a pat- ent for a thing which he claims to have invent- ed cannot at any future time claim another pat- ent for a substantial part of the same thing." Smith V. Bly et al., 5 McLean, 76. — McLean, 1849. 11. When a prior patent is offered, it prima facie covers what it describes, notwithstanding a subsequent patent may cover a portion of the same thing. Colt v. Mass. Arms Co., 1 Fish. P. C. 108.— Woodbury, 1851. 12. If the jury believe that an alleged prior thing was given up as incomplete, it is to be considered as an abandoned experiment. — lb. 13. The defence of prior publication, where the work in question contains upward of thirteen hundred pages, is not properly pleaded by sim- ply referring to the work as a whole. Silsby et al. V. Foote, 14 Howard, 218.— Sup. Ct. 1852. 14. " So cautiously does the law regard the public rights, that if the thing invented or dis-' covered had been described in any foreign pub- lication, it is declared to be fatal to the patentee. This provision goes upon the presumption that if such foreign publication has been made the patentee may have acquired a knowledge of it. And this presumption is not rebutted by prov- ing, so far as a negative can be proved, that the inventor had no knowledge of it. The publica- tion may be proved, as to its contents, and the fact of publication by the production of the book, or by parol testimony. ' ' Allen v. Hunter, 6 McLean, 303.— MoLeak, 1855. 15. Statements in a prior publication as to facts occurring before the date of the publica- tion are immaterial. Seymour et al. v. MoOm-- mick, 19 Howard, 96. -Sop. Ct. 1856. 16. The invalidating prior publication may be a home or foreign publication. Waterbury Brass Co. v. iV". T. & Brooklyn Brass Co., 3 Fish. P. C. 48.— Ingbrsoll, 1858. 17. A prior patent anticipates a later patent if it describes, though it does not claim, the thing claimed in the later patent. Whipple v. Baldwin M'fg Co., 4 Fish. P. C. 39.— Sprague, 1858. 18. A prior publication, in order to be sufficient as a defence, should be such "as to enable a mechanic skilled in the art to construct the machine ; it should not be vague reference to or suggestions of the thing described." Hayes et al. v. Sulsor et al., 1 Bond, 279. — Leavitt, 1859. 19. A prior publication, in order to be avail- able as a defence, must have been prior to the complainant's invention and not simply to his application for patent. Bartholomew v. Sawyer et al., 4 Blatch. 347. — Ingersoll, 1859. 20. Defendants' answer having set up a certain printed publication^ they were not permitted to offer in evidence a work which consisted of plates and drawings without printed description. Judson V. Cope et al., 1 Bond, 327. — Leavitt, 1860. 21. A prior patent or publication, in order to be available as a defence, must describe the in- vention so clearly and intelligibly that it can be made or constructed by a competent mechanic. Mere suggestion or imperfect description is in- sufficient. — lb. 22. A foreign patent, in order to be available as a defence, must be prior to the invention of the home patentee, and not simply prior to his application. Howe v. Morton etal., 13 M. L. E. 70.— Sprague, 1860. 23. In considering whether a prior patent an- ticipates the patent in suit, the model appurte- nant to the application for the prior patent is ad- missible in evidence. Singer et al. v. WalmsUy, 1 Fish. P. C. 558.— Giles, 1860. 24. A person cannot have a patent for an im- j)rovement which is substantially described and claimed in spprior patent to himself. Sickles v. Falls Co., 4 Blatch. 508.— Nelson, 1861. 25. Where the defence relied on is a prior de- scription, in order to be effective as such it must describe substantially the same organized mechanism as that of the patent, operating in substantially the same manner. Clark Patent Steam & Fire Megulator Co. v. Copeland, 2 Fish. P. C. 221.— Shipman, 1862. 26. A patent was applied for December 11th, 1854, and issued September 11th, 1860. The same inventor applied for another patent June 15th, 1857, which was issued December 1st, 1857. The patent first applied for and last is- sued described what was embraced by the claim of the patent last applied for and first issued. The court held that the patent last issued was not thereby invalidated. Hay den v. Suffolk M'fg Go., 4 Fish. P. C. 86.— Sprague, 1863. 27. A prior foreign patent of June 16th, 1853, being set up as a defence, thereof the court said ; " Unless, therefore, the complainants show that the invention embodied in the patent claimed by 600 PEIOE PATENT OR PUBLICATION. th^m was made and reduced to practise prior to June 16tli, 1853, they cannot prevail in the suit, and the burden of proof is shifted upon them to establish those facts." White et al. y. Allen, a CliflEord, 234.— Clippokd, 1863. 28. "Where an invention has been patented in a foreign country or has been described in a public work, then a man claiming to have been the inventor in this country is presumed, in the eye of the law, to have been acquainted with that invention as it vpas known in tjie foreign country." Sioiftet al.Y. Whisenet al.,2'Boa3L, 115.— Lbavitt, 1867. 29. Where the device of a prior patent is in- operative, impracticable, and worthless, it does not operate as an anticipation of a prior patent. Harwood et al. v. Mill River M'fg Co., 3 Pish. P. 0. 536.— Shipman, 1869. 30. " Patented inventions cannot be supersed- ed by the mere introduction of a . . publica- tion of the kind, though of prior date, unless the description and drawings contain and exhibit a substantial representation of the patented im- provement in such full, clear, and exact terms as to enable any person skilled in the art or science to which it appertains to make, con- struct, and practise the invention to the same practical extent as they would be enabled to do if the information was derived from a prior pat- ent. Mere vague and general representations will not support such a defence, as the knowl- edge supposed to be derived from the publica- tion must be sufficient to enable those skilled in the art or science to understand the nature and operation of the invention, and torecord, nor can an appel- lant be allowed to assign for error the ruling of the court in respect to any defence not set up in his plea or answer. Appellate courts cannot amend the pleadings, nor can they allow that to be accomplished by an assignment of error. ' ' Bates et al. V. Goe, 98 U. S. 31.— Sup. Ct. 1878. 197. " The only authority for attacking the originality or validity of a patent is that given by the act of Congress, and consequently the attack must be made in the mode the patent act prescribes." — lb. 198. " More than one patent may be included in one suit, and more than one invention may be secured by the same patent, in which case the several defences may be made to each patent in suit and to each invention included in the bill of complaint. " — lb. 199. Where a bill of complaint sets forth the original and reissued patents, the question of the identity of the two patents is examinable upon de- murrer. Criant Powder Co. v. California Powder Works et al., 96 U. S. 138.— Sup. Ct. 1878. 300. In equity the bankruptcy of a party and an appointment of an assignee, does not abate pending suit, but calls for a supplementary bill citing in the assignee. This can be avoided by a reconveyance to the complainant in suit. Gear V. Fitch, 3 Bann. & Ard. 573.— Lowell, 1878. 201. " Masters charged with that duty may examine the respondent, and, if necessary, in- spect his books, but it is incumbent upon the 642 PEOCEDUEE. complainant to furnish proof of whatever else is jiecessary to enable the master to make the proper computation. " Brady v. Atlantic Works, 3 Bann. & Ard. 577.— Clifford, 1878. 303. Where there is no actual contest between the parties before a court, the court will not pro- ceed to make a decision upon the merits. Am. Middlings Purifier Go. v. Vail et al., 15 Blatch. 315.— Blatchford, 1878. 303. After a case was at issue and preliminary- injunction ordered, defendants applied for leave to amend their answer. The court held that the application should be denied ; among other reasons was this, that in a former action between the same parties, upon the same patent, in the same court, by the consent of the defendants, a de- cree was rendered wherein complainant's patent was adjudged valid and defendants found in- fringers. Pentlarge v. Bseston et al., 4 Bann. & Ard. 33. —Benedict, 1878. 304. "When the proofs are closed, and at the final hearing, the complainant is permitted to specify the claims of the patent on which he will ask for a decree. TJuttcher Heating Co. v. Car- bon Stove Co., 4 Bann. & Ard. 68.— Nixon, 1878. 305. Issues of fact, in civil cases, in the circuit courts, may be tried and determined without a jury, whenever the parties, or their attorneys of record, file with the clerk a stipulation in writing- consenting to that mode of trial. Judson v. Bradford et al, 3 Bann. & Ard. 539.— Cmf- FORD, 1878. 306. Where, upon the coming in of a case from a master, the court awards only nominal dam- ages, the case will not be sent back to the mas- ter in the absence of evidence showing good reason therefor. Oa/i-retson v. Clark et al., 15 Blatch. 70.— Blatchford, 1878. 307. " More than one patent may be included in a suit, and more than one invention may be secured in the same patent, in which cases the several defences authorized by the patent act maybe pleaded to each patent in suit and to each Invention included in the charge of infringe- ment." Kelleher et al. v. Barling, 4 Cliff. 434. —Clifford, 1878. 308. ' ' Questions of infringement are questions of fact, in respect to which the parties are chiefly interested in the court's conclusions, and in that view it is not usually deemed necessary to enter much into the details of the evidence." — lb. 309. " A bill of exceptions cannot be taken on the trial of a feigned issue directed by a court of equity, or, if taken, can only be used on a mo- tion for a new trial." Watt v. Starke, 17 O. G. 1093.— Sup. Ct. 1879. 310. The complainant, on a motion for a new trial, may have the evidence or the substance of it stated and made part of the record, and then an appellate court can see whether the court be- low had before it sufficient grounds for being satisfied with the conclusions of the jury. " This is the proper course in such a case. " — lb. 311. " Where a court of chancery suspends proceedings in a cause in order to allow the parties to bring an action at law to try the legal right, it does not assume to interfere with the course of proceedings in the court at law, and a motion for new trial must be made to that court ,; but when it directs an issue to be tried at law a motion for a new trial must be made to the Court of Chancery, and for that purpose the party applying for a new trial must procure notes of the proceedings, and of the evidence given at the trial, for the use of the chancellor. This is done either by having the proceedings and evidence reported with the verdict or by moving the chancellor to send to the judge who tried the issue, for his notes of trial, or procuring a statement of the same in some other proper way. ' ' — lb. 313. " The verdict of a jury upon an issue out of chancery is only advisory, and never conclu- sive upon the court. It is intended to inform the conscience of the chancellor. It may be dis- regarded and a decree rendered contrary to it." —n. 313. " A bill of exceptions is not the proper mode of reviewing the trial of an issue out of chancery." — lb. 314. Where, in a hearing in damages and profits, the counsel employed are not experienced in such matters, and overlook material points, it is proper tliat the court call attention thereto, and allov the case to be recommitted on the applica- tion of the other party. Star Salt Caster Co. et al. V. Grossman et al., 4 Bann. & Ard. 566. — Lowell, 1879. 315. Where a bill of complaint Is demurred to, and the bill is maintained, the demurrer will be overruled, with costs to the complainant, and leave to defendants to answer over. Perry v. Littlefield et al. 17 Blatch., 373. — Blatchford, 1879. 316. Where two suits are pending for infringe- ment, one against the maker of the infringing article, and tlie other against the seller, account- ing will only be ordered in the case against the maker. Harper v. Cooke et al. , 5 Bann. & Ard. 50.— Lowell, 1879. 317. " The initial litigation, for the purpose of asserting and sustaining the validity of a pat- ent, should be between the patentee and infring- ing manufacturer. After a patent has been ju- PROCEDURE. 643 dicially sustained in a suit, then the patentee should have the full aid of the courts to suppress the sales of Infringing goods." Irwin et al. v. MeBoherts et al., 4 Bann. & Ard. 411. — Blod- GETT, 1879. 218. Defendant moved for leave to amend his answer so far as to deny certain allegations of the complainant which, not being denied in the answer, stood as admitted. To the complaint, defendant had before interposed a pleading which combined demurrers to each count in the com- plaint, with pleas of the statute of limitations, and matter in defence, which could only be urged in mitigation of damages ; the demurrers were overruled and the pleadings permitted to stand as an answer. Defendant then moved to amend the answer and the motion was granted, but upon the hearing of that motion it was first dis- covered that the answer, as amended, did not contain a denial of the allegations in the com- plaint. The court held that complainant could have had stricken out the matter in defence, or the demurrers on motion, but instead it pre- ferred to notice the demurrers for hearing ; ,by, doing this it elected to treat the demurrers as a regular pleading ; upon a decision overruling the demurrers, unless leave had been given to defendant to answer, there would have been no answer in the case ; this motion was considered as though there had been no answer until leave was given, and the position of the complainant to be the same as though defendant had for the first time served the answer he now moved to amend. Ooodyear Dental Vulcanite Co. v. White, 17 Blatch. 5.— Wallace, 1879. 319. The defence of abandonment cannot be ihade at a hearing on the merits unless the same was set up in the answer. Williams v. Boston & Albany B. B. Co., 17 Blatch. 31.— "Wallace, 1879. 230. " The court has power to set aside the report of a master for any manifest error either in law or fact, and to recommit it for fUrtiier proceedings, or to correct it, if the means of cor- rection are furnished. " Steam Stone Gutter Co. v. Windsor M'fg Co. et al., 17 Blatch. 34.— Wheeler, 1879. 231. It is " not the province of the master, nor is it the province of the court, to suggest any specific line of proof, either as proper or neces- sary. The burden is on the plaintiff to lay a basis, by evidence, for ascertaining the proper profits or damages. If he produces certain evi- dence and lays a certain basis, all that the mas- ter and the court are to do is to say whether he has made out his case or not. If he has not made out his case, that is aU there is to be said. " Oarretson v. Clerk et al., 4 Bann. & Ard. 536. — Blatchpoed, 1879. 323. A bill and answer having been filed, com- plainants filed an afiidavit ; complainants moved for a decree pursuant to the prayer of the bill, " upon the bill and answer filed herein and the annexed affidavit and the papers therein re- ferred to." The court held that this motion, in the way in which it was made, coupled with the affidavit, was not in accordance with the practice of the federal courts ; and the court proceeded to hearing upon the bill and answer without reference to the affidavit. Evory et al. v. Can- dee et al , 17 Blatch. 300.— Shipman, 1879. 333. " In equity, the objection may be taken by demurrer, if the want of the parties appears on the face of the bill, or by plea, or answer, or orally at the hearing. Rule 53, in equity, limits the right to this extent, that if the objection is taken for the first time at th6 hearing, the court shall be at liberty, if it thinks fit, to make a de- cree saving the rights of the absent parties." Hammond v. Hunt et al., 4 Bann. & Ard. 111. — Lowell, 1879. 334. If a complainant omits to file a replica- tion, and the defendants proceed to take testi- mony without objection, defendants cannot finally object to the lack of replication. Fischer V. Wilson et al., 16 Blatch. 320. — Blatchford, 1879. 225. Defendant made application for an order dismissing complainants' bill for want of a rep- lication. It appeared that complainants had failed to file the replication because negotiations for settlement were pending between the parties. The court allowed complainants to file replica- tion riAine pro tunc. Bdbinson etal. v. Bandolph, 4 Bann. & Ard. 317.— Nixon, 1879. 226. A proposed amendment to an an.swer set- ting up in new defence after the case has gone to a master on accounting, where the same de- fence may be practically used before the mas- ter, is to be denied. Evm-y et al. v. Candee & Co., 5 Bann. & Ard. 67.— Shipman, 1879. 327. " The right to file a bill of revivor is con- fined to cases of representation of the party de- ceased by the mere appointment and operation of law. ... On the other hand, there may be a priority of right and title, under the deceased, by a transfer or conveyance of that right to a person who is not in by mere operation of law, and is not the heir or personal representative of the deceased, and in such a case a bill of revivor will not lie." Metal Stamping Co. v. Crandall, 18 0. G. 1581.— Wallace, 1880. 238. As regards a partnership, neither a bill of revivor nor a supplemental bill can be prose- 644 PEOCEDUEE. cuted except in the names of the individual part- ners. — lb. 239. For rules for proceeding on reference to a master, for an accounting in damages and profits, see — . Kerosene Lwmp Heater Go. v. Fisher, 1 Fed. Rep. 91.— Lowell, 1880. 230. There being diilerent complainants, and coaflict of claims between them, defendants were ordered to pay the amount found due as dam- ages into court. Campbell v. James et al. , 18 Blatch. 93.— Wheblek, 1880. 231. While a bonajlde motion to strike an an- swer from tlie files is pending, the suit will not be dismissed on the motion of defendant for lack of replication. AUis et al. v. Stowell, 10 Blatch. 57.— Dyer, 1880. 282. Motion to strike an answer from the flies is a proper mode of objecting thereto, as much as the filing of exceptions thereto. — lb. 333. Where an amended answer has been filed, preparatory to a rehearing, upon special leave of court, exceptions to such an answer cannot be filed without leave of court, but a motion to strike the answer from the flies may be made without special leave. — lb. 334. By the court: "The petition contains what purports to be a copy of my opinion, but it is a copy of the opinion before it was revised* The opinion should not have been published un- til it had received my revision, as counsel very well knew." Oiant Powder Co. v. Cal. Vigorit Powder Co. et al., 5 Fed. Rep. 197.— Field, 1880. 335. After entry of final decree, in a circuit of original jurisdiction, a petition for rehearing cannot be considered ex parte. — lb. 236. By the court: "Nothing can be gained by the strong language expressed by counsel iu presenting the petition as to the supposed errors of the court, nor by the statement as to what may have been said of the decision by other counsel, who have neither examined, studied, nor understood the case. ' ' — lb. 387. A corporate board of education of New York City was sued for infringement ; the Leg- islature provided a successor to the board under a new name, and then another ; meanwhile the cause proceeded to hearing on the merits and decree. Then the flnal successor filed an an- swer as if it were a new party. The answer was ordered off the files. Allen v. New York, 18 Blatch. 289.— Wheelee, 1880. 338. ' ' The rules in equity are framed for bringing a cause to a hearing, and do not apply after a cause has been heard unless some pro- ceedings are taken to bring it within their opera- tion again, and to start it anew toward a hear- ing. When a cause is heard without objection by either party, all steps not taken by either which the other had a right to insist upon for the orderly bringing the cause to a hearing, must be considered as waived."— /J. 339. " An interlocutory decree is always open to amendment and correction." It is proper, during an accounting, to have the answer and decree amended to let in a prior foreign patent to the same inventor, for the same invention, to get its limiting effects in the home patent. De Florez et al. v. Ma/ynolds et al., 17 Blatch. 436. — Blatchpokd, 1880. 340. A replication filed after the allowed time, and testimony taken by complainant more than three months thereafter, may stand as regular, if the court so order. Fischer v. Hayes, 19 Blatch. 26.— Blatcfpokd, 1881. 241. "The general power of the court over its own judgments, orders, and decrees in civil and criminal cases, during the existence of the term at which they are first made is undeniable. " " The power to vary a flnal judgment or order> at least in a case where there was jurisdiction to make it, does not exist after the term at which it was made." — lb. 243. Where a prior suit on the same patent is pending in another court — which a party is otherwise entitled to maintain— and the later suit might unduly afEect the rights of the parties in the earlier suit, action in the later suit will be stayed and the parties required to prosecute the earlier suit with despatch. Miller et al. v. lAg- gett & Myers Tobacco Co., 2 McCrary, 375. — Mc- Crart, 1881. 243. When a plea is overruled the defendants must have leave to answer. Wooster v. Blake et al., 7 Fed. Rep. 816.— Blatchpokd, 1881. 244. A master's report having been made, a flnal decree ordered, and appeal claimed, com- plainant moved to recommit to master, to take account of infringement of later date than cov- ered by his report. Motion was denied without prejudice to complainant's right than to renew it after decision by Supreme Court. Union Met. Cartridge Co. v. U. S. Cartridge Co., 8 Fed. Rep. 446.— Lowell, 1881. 245. By the court : " As . . . has appeared generally in the suit, he has waived his right to object that he is not named as a defendant in the prayer for a subpoena, and he has no concern with the naming of others in such prayer." Biierk V. Imluuuser et al., 8 Fed. Rep. 457.— Blatch- roRD, 1881. 346. Defendant being sued for infringement, justified under license, by plea, and at the trial of the plea offered aflSdavits taken prior to the filing of the plea. The court doubted whether PEOCBDURE. 045 ex parte affidavits were receivable at all, and held that if they could be offered at all, " it must be on notice to the adverse party and the lender of the affiant for cross-examination." Lillientlial et al. v. Waalilmrn, 8 Fed. Rep. 707. — Pakdee, 1881. 247. Where defendants sought to have their answer amended to let in a new patent, but they did not show its materiality, or why it could not have been set up before, the application was de- nied. Richardson v. Croft et al., 20 O. G. 372. — Blatchfoed, 1881. 248. Where both parties acquiesced in going on in a federal court under a complaint and answer filed in a state court, without the filing of a new bill of equity in the federal court, and where complainant treated the answer of defend- ants as a general denial of 'the agreement set up in the complaint, the court so treated it. Gard- ners. Grossman et al., 21 O. G. 204. — Blatch- FOBD, 1881. 249. An order of court allowed respondents to give notice of a motion for leave to renew their motion to amend their answer. Instead of giv- ing notice of a motion for leave to /enew such motion, they gave notice only of a motion for leave to amend their answer ; but, as both parties agreed to treat the motion argued as one for leave to amend, and not for leave to renew, the court so treated it. Bichardson v. Croft et al., 20 O. G. 526.— Blatchford, 1881. 250. Where a replication has not been filed, but both parties have treated it as filed, the court will also so treat it. Tilghman v. Proetor et al. , 103 U. S. 707.— Sup. Ct. 1881. 251. For a discussion of the rights of the United States Circuit and District courts to adopt and vary the laws, process, forms, and procedure of the states, see — . Steam Stone Cutter Co. v. Sears, 20 Blatch. 23.-^ Wheeler, 1881. 252. The United States Circuit Court for the District of Vermont, in its Rule 11, provided that " the creation, continuance, and termination of liens and rights created by attachment of prop- erty, or the arrest of a defendant, shall be gov- erned by the laws of this state." iifeM, that it had the right, in an equity cause, to issue a writ of sequestration, in the nature of an attachment, to create a lien for satisfying a decree pending the taking of an account of damages and profits in a patent suit. — lb. 253. After hearing on a motion for a provi- sional injunction, a party cannot take ex parte affidavits and have them considered. IlUng- worth V. Spcmlding et al., 9 Fed. Rep. 154.— Nixoif, 1881. 354. In a part of a series of cases, using the same evidence, defendant had no just claim to further time for taking testimony but, because of the other part of such series, the time was extended. Wooster v. Howe Maeh. Co., 10 Fed. Rep. 666.— Blatchford, 1883. 355. The fees of the master are to be borne in the first instance by complainant. Maedonald v. Shepard, 10 Fed. Rep. 919.— Lowell, 1882. 356. A party on whom improper service of process is made must in the first motion based thereon show the facts which evidence the im- propriety of the service, if such facts are then within his knowledge ; and it will not avail him to make a showing of such facts in a second motion. Matthews v. Puffer et al., 30 Blatch. 233.— Blatchford, 1882. 257. By the court : " The examiner had no power to rule on the admissibility of the evi- dence and the defendant had the right, upon a question which, to say the least, was not free from doubt, to take the opinion of the court. Had he answered, the mischief which he seeks to avoid would have been accomplished and he would have been left remediless. He acted under the advice of counsel, apparently in good faith, and even though he acted mistakenly, it is not a case where he should be punished." Eoberts v. Walley, 14 Fed. Rep. 167.— Coxh, 1882. 258. After interlocutory decree, respondent will not be permitted to impeach the decree on the ground that complainant's patent was void by reason of not being limited on its face to ex- pire with a prior foreign patent for the same subject-matter. Bate Befrigerating Co. v. Qil- lett, 33 O. G. 1205.— Nixon, 1883. 259. By the court : "It is never too late at any time during the pendency of the proceed- ings for the court to examine into its right and power to make a decree or a judgment in a case." Nor need the objection be raised in the pleadings. Spring et al. v. Domestic Sewing Mach. Co., 13 Fed. Rep. 446.— Nixon, 1882. 260. A variance between an original patent and its reissue may be availed of by a plea in a bar which sets out the original and reissued patents and also pertinent intermediate patents. Huhhle et al. v. Be Land, 11 Bissell, 382.— Dyer, 1882. 261. A suit for infringement having been brought upon a patent, the answer alleged in- validity of the patent by reason of prior inven- tion by another person. There being a suit in another court pending for the purpose of de- termining the question of priority, the decision was reserved in the infringement suit for the 646 PEOCEDITEB. determination of the other suit. LocTcwood v. Gutter Tower Co., 11 Fed. Rep. 724.— LowftLL. 1882. 262. Some of the defendants' evidence was taken and filed out of time. No motion to sup- press was filed. The orator objected to its con- .sideration. As no motion to suppress was filed, the testimony was allowed to stand and was considered. Matthews y. Spangenberg et al., 20 Blatch, 482.— Whbblek, 1882. 263. Complainants, upon an accounting, hav ing testified as to complainants' cost of manu- facture and their profits, defendant was held entitled, upon cross-examination, to have com- plainants' books produced ; but it was held also that a production of the books at complainants' office would answer. Wisner et al. v. Dodds, 14 Fed. Rep. 655.— Baxter, 1883. 264. Where counsel made verbal exceptions to the master's draft report, but not written ones, he was allowed by the court, and after the hearing by the court, to file the written excep- i tions nunc pro tunc. MscJier v. Hayes, 16 Fed. Rep. 469.— Shipman, 1883. 265. Where the court was of the opinion that the master's award of nominal damages was not a satisfactory disposal of the case, and that fur- ther pertinent evidence was capable of produc- tion, the case was sent back to the master for further hearing. — lb. 366. Where the defendant, on a hearing in damages, refuses to produce his books, and com- plainant takes no steps to produce their produc- tion, complainant will have no remedy in the premises thereafter. — lb. 267. By the court : " Objections to the juris- diction are usually taken in the first instance, but a plain defect of jurisdiction may be insisted upon at the hearing." Burdelly. Comstock, 15 Fed. Rep. 395.— Baxter, 1883. 268. A suit for infringement of a patent hav- ing gone to an accounting, defendant asked that complainant be enjoined from prosecuting other suits on the same patent until the determination of the suit first mentioned. These other suits having been prepared for final hearing on proofs, the court refused to interfere. Allia v. Stowell, 16 Fed. Rep. 783.— Dyer, 1883. 269. " To prevent a multiplicity of suits, the court may, in a proper case and upon proper showing, require the prosecution of suits be- tween the patentee and the mere user of the pat- ented machine to be suspended, and to await the result of a suit pending between the patentee and the principal infringer from whom the user purchased the machine. Undoubtedly the court has the power to exercise restraining control over the litigation where the principal parties are before it. The important question in such a case would seem to be, When may the power be rightfully and properly exercised ?" It will not be exercised where it is not fully shown that the user purchased his machines of the defend- ant, and that they are the same as those involved in the suit against the defendant. — lb. 270. If an objection urged to a bill involves only a question of pleading, and the bill is not defective in a matter of substance, such an ob- jection wiU not be available at a hearing on the merits. Such objection must be taken by de- murrer. And even where there is a defect of parties appearing upon the face of the bill, the defendant must resort to a demurrer or the court is at liberty to make a decree saving the rights of the parties. PeVham v. Edelitieyer, 31 Blatch. 188.— Wallace, 1883. 271. An instance of the master's fees upon the accounting ordered to be paid by the defendant in the first instance. Vrner v. Kayton et al. , 31 Blatch. 438.— Wheeler, 1883. 372. In filing an • exception to a report of a master, it is not necessary to state exactly therein the exception taken before the master. Marks V. Fox, 18 Fed. Rep. 713.— Wallace, 1883. 273. Where, of difEerent defendants, only part have been served with subpoena, the appearance of a solicitor for the defendants generally is only the appearance for such defendants as have been served with process. Lewis v. Standard Steam Laundry Machinery Co. et al., 31 Blatch. 184. — Wheeler, 1883. 274. Where a defendant named in a bill of complaint has not been served with process, but answers to the bill, he becomes a party to the suit.— J6. 275. Special permissions to take testimony are only granted where there is a reasonable prospect of securing the desired testimony. Hicks v. Otto et al., 17 Fed. Rep. 539.— Wheeler, 1883. 276. Where a master's finding omits finding on a material point, the case will be recommitted in order to obtain such finding. McKay v. Jackman, 17 Fed. Rep. 641. — Wheeli^r, 1883. 377. Where a decree for infringement rests on the consent of parties — the patent never having been construed— such decree does not form a basis for deciding, on motion, that some struc- ture not before in question in the former suit, comes within the decree, and a new bill must be filed. Higby v. Columbia Rubber Co., 18 Fed. Rep. 601.— Lowell, 1883. 378. The Supreme Court will not interfere, on motion, with injunctions granted by the Cir- cuit Court except in cases appealed before the PKOCEDUEE. 647 adoption of Equity Eule No. 30. White et al. V. Dunbar et aZ., 36 O. G. 353.— Sep. Ct. 1883. 279. ' ' The appearance of the solicitor for tlie defendants would of itself alone be an appear- ance only for defendants who had in some man- ner been served with process. ' ' Smith v. Stand- ard Laundry Mack. Co., 19 Fed. Rep. 826. — Whbelbb, 1883. 280. When a defendant named in the bill of complaint answers the bill, he becomes per- sonally by his own act a party defendant to tlie cause made by the bill. — lb. 281. Where a plaintiff brought suit for the United States, as well as for himself, to recover the penalty given by the. statute which forbids the stamping of unpatented articles as patented, and pleaded some special damage, the plea to such special damage was held to be irrelevant and subject to be stricken out, on motion, under the New York code of procedure which regu- lates the practice in common law actions, in the district Where the suit was brought. This pleading was not, however, objectionable on demurrer. Winne v. Stww, 19 Fed. Rep. 507. — Bkown, 1884. 282. Where a suit is brought by a patentee for the annulment of an interfering patent, it is not pertinent for the defendant to attempt to show the invalidity of complainant's patent ; and a plea to that effect will be overruled. Pentlarge v. Pentlarge et al., 22 Blatch. 10. — Benedict, 1884. 283. By the court : " In passing upon the novelty of the alleged improvement, covered by this patent, we are permitted to consider mat- ters of common knowledge or things in common use." Phillips et al. v. Gity of Detroit, 111 U. S. 604. -Sup. Ct. 1884. 284. The court may dismiss a bill on the ground of want of patentability without looking into the answer, and to that end may read com- plainants' patent in view of the state of the art. Nieodemus et al. v. Frazier, 19 Fed. Rep. 260. — Morris, 1884. 285. Where complainant bases his claim of infringement upon one of the claims of his pat- ent, defendant cannot put other claims in issue. Uavemeyer v. Bandall, 21 Fed. Rep. 404.— Nixon, 1884. 288. " The defence of unreasonable neglect or delay in filing a disclaimer must be set up in the answer before it can be considered by the court." Worden et al. v. Searls, 21 Fed. Rep. 406.— Nixon, 1884. 287. It seems that the question whether two patents interfere with each other may be proper- ly raised by demurrer to the bill. Morris v. Kempshall M'f'g Co., 20 Fed. Rep. 121.— Ship- man, 1884. 288. Where defendants' answer was irregular in its form, and complainant " did not move to have the answer taken off the file for irregular- ity, nor to have the bill taken pro confesso for want of an answer, as if the answer was void, nor except to the answer for insufficiency— by replying to it, he admitted it to be sufficient, however imperfect it might be. The issue, joined upon the answer by the traverse, was upon its allegations and denials as they were, and the orator by joining that issue placed him- self where he must overcome the denial and maintain his bill. ' ' Wooster v. Muser et al. , 20 Fed. Rep. 162.— Wheeler, 1884. 289. " An answer in equity is required for discovery and evidence as well as for grounds of defence, and evidence cannot be given by attor- ney ; therefore an answer cannot be made by an attorney, ' ' and an answer thus made is irregular. —lb. 290. " The orator is entitled only to a decree settling his own rights. ' ' Werner v. Beinhardt et al.. 20 Fed. Rep. 163.— Wheeler, 1884. 291. In an accounting " Rule 77 gives the master very general discretion in the conduct of the investigation before him. He occupies, for the time being, the position of the court, and is not to be continually interfered with while dis- charging his duties to the best of his ability. It would create intolerable delays and confu- sion, besides putting an unnecessary burden upon the court, to hold that each time the mas- tei makes a ruling the aggrieved party may, by special motion, have it reviewed. The orderly, and it seems the generally accepted, procedure is to .present all questions arising before the master by objections and exceptions to his re- port." Lull V. Clark et al., 22 Blatchi 207.— CoxE, 1884. 292. In an accounting before a master, the question as to whether the orator shall be al- lowed, in rebuttal, to introduce evidence that is not strictly rebutting to defendant's evidence, but tends to prove the orator's case, as made in his opening, more freely and specifically than his opening did, must in the first instance, at least, rest in the sound discretion of the master, and the court will not upon application decide this question for the master. Wooster v. Oum- birnner, 20 Fed. Rep. 167.— Wheeler, 1884. 293. After delivery of the court's opinion, but before the signing of the interlocutory decree, complainant moved to amend the bill by the in- sertion of averments to the effect that the assign- ment whereby complainant derived its title con-: 648 PEOCEDUEE. veyed to complainant the right of recovery for previous infringements. The amendment was allowed. iV. T. Orape Sugar Co. v. Buffalo Grape Sugar Co. et al., 33 Blatch. 183.— Ship- man, 1884. 294. " Interlocutory decrees remain under the control of the court and subject to its revision until the master's report comes in, and is finally acted upon by the court, and the whole of the matters in controversy are disposed of by a final decree." Wooster v. Handy, 33 Blatch. 307. — Blatchford, 1884. 395. Although there may be an interlocutory decree for the complainant, still if the master's report shows that the complainant is not entitled to recover, a final decree for the defendants is proper. Steam Stone Cutter Co. v. Slieldons et al, 33 Blatch. 484.— Wheelbb, 1884. 396. "Where it is sought to sue a receiver as an infringer, if he be sued as an infringer, whereby the assets in his hands must respond to the judgment, permission to sue him must be first had of the court under which he is admin- istering the assets intrusted to him. On the other hand, where he has taken possession of the property not rightfully belonging to his trust, in an administrative capacity, whether as United States marshal, sheriff, administrator, or otherwise, he is personally responsible for the trespass committed. Where the alleged infringe- ment was committed by defendant under positive orders of the state court, the United States court will withhold its action for the making of an application to the state court for the proper modi- fication of its order. Curran v. Craig, 23 Fed. Rep. 101.— Treat, 1884. 297. It seems that when a case is before a court for final hearing and decision, the court will, in its discretion, permit further evidence to be taken as to the true meaning of the specifica- tion and drawings of the patent in question. Frazer et al. v. Oates & Scoville Iron Worlcs, 23 Fed. Rep. 439.— Blodqett, 1884. 298. ' ' The statutory defences are not the only defences which may be made against a patent. Where it is evident that the Commissioner, under a misconception of the law, has exceeded his authority in granting or reissuing a patent, there ;is no sound principle to prevent a party sued for iits infringement from availing himself of ille- gality, independently of any statutory permission 'to do so." Malm y. na')~woodet al.,\