UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY TEXT-BOOK OF THE PATENT LAWS OF THE UNITED STATES OF AMERICA. BY ALBERT H. WALKEJR, OF THE HARTFORD BAR. NEW YORK: L. K. STROTJSE & CO., LAW PUBLISHERS. 95 NASSAU STREET. 1885. LIBRARY Of YORK COUNT f ASSOCIATION COPYRIGHT, 1883, 1JT ALBERT EL WALKER 20078 PREFACE. THE Constitution and the statutes of the United States, together with twelve hundred and forty-six Federal and State judicial decisions, are the principal sources from which the materials for this text-book were drawn. The most extensive treatise heretofore published on the same subject, was published in 1873 ; but it cited only two hundred and eighty American cases, together with one hundred and sixty -one English adjudications. The inadequacy, to the needs of the profession, of a treatise so limited in scope, was clearly impressed upon me when I entered, in 1877, upon a somewhat extended practice in patent litigation. During the next four years, I was called upon to argue several patent cases in the Supreme Court, and many others in many of the Circuit Courts of the United States ; and in preparing those arguments, I was forced to make many laborious researches, from which a complete text-book would have largely relieved me. Under these circumstances, I resolved, early in 1881, to undertake the production of a treatise so much needed by the profession. I began writing on the first day of May of that year, and soon became so much inter- ested in the work, that I largely suspended my active practice of the law, in order to give the book the freshest of my efforts, and thus the greatest degree of merit con- IV PREFACE. sistent with my abilities. The resulting treatise covers the entire field of the patent laws of the United States, as those laws were enacted in the statutes and developed in the decisions, from the foundation of the national government in 1789, down to the first day of September, 1883. How accurately and well it covers that field, is a question which belongs to the bar and to the bench ; and to the generous judgment of the bench and of the bar, I commit the result of my long and interesting labor. A. H. W. HARTFORD, CONNECTICUT, September 26, 1883. TABLE OF CONTENTS. CHAPTER I. THE SUBJECTS OF PATENTS Pages 1-16 1. Constitutional and statutory foun- dation of the patent laws. 2. Constitutional and statutory meaning of the word " dis- covery." 3. Patent law meaning of the word "art." 4. Patent law meaning of the word "process," as illustrated in the case of Corning v. Burden. 5. Patent law meaning of the word "process," as illustrated by the case of MacKay v. Jackman, and by other Circuit Court cases. 6. Patent law meaning of the word "process," precisely defined. 7. Difference between a patent for a "process," and a patent for a "principle," inquired into. 8. Illustrated by the case of McClurg v. Kingsland. 9. Illustrated by the case of O'Reilly v. Morse. 10. Illustrated by the case of Mowry v. Whitney. 11. Illustrated by the case of Tilgh- man v. 'Proctor. 12. Illustrated by the four cases when compared. 13. Illustrated by the four cases when contrasted. 14. Deduced from the four cases as compared and contrasted. 15. Illustrated by the eighth claim of Morse. 16. Machines, and improvements of machines. 17. Manufactures. 18. Compositions of matter. 19. Distinction between machines, manufactures, and compositions of matter. 20. Designs. 21. On whose invention designs are patentable. 22. Utility and beauty of designs. CHAPTER II. INVENTION . . . .Pages 17-35 23. Invention necessary to patent- ability, 24. Many negative rules, but no affirmative rule, for determining the presence or absence of in- vention. 25. Mere mechanical skill is not invention. VI CONTENTS. 26. Circumstances indicating differ- ence between invention and me- chanical skill. 27. Excellence of workmanship is not invention. 28. Substitution of materials is not invention. 29. Exception to the last rule. 30. Enlargement is not invention. 31. Change of degree is not inven- tion. 32. Aggregation is not invention. 33. Simultaneousness of action is not necessary to invention. 34. Duplication is not invention. 35. Omission is not generally inven- tion. 36. Substitution of equivalents is not invention. 37. New combination, without new mode of operation, is not inven- tion. ' 38. Using old thing for new purpose is not invention. 39. Cases to which the last rule docs not apply. 40. Doubts relevant to invention, when otherwise insoluble, are solved by ascertaining compar- ative utility. 41. Form. 42. Questions of invention are ques- tions of fact. 43. Questions of invention some- times investigated in the light of the state of the art. 44. Joint and sole inventions. 45. How made. 46. How distinguished. 47. Suggestions to an inventor. 48. Information sought by an in- ventor. 49. Mechanical skill not necessary to invention. 50. Sole patent to one joint invent- or is void. 51. Joint patent to sole inventor and another is void. CHAPTER III. NOVELTY Pages 36-51 52. Novelty necessary to patent- ability. 53. Novelty defined. 54. Not negatived by knowledge or use in a foreign country. 55. Not negatived by private patent granted in a foreign coun- try. 56. Prior printed publications. 57. Fullness of prior patents and printed publications. 58. Novelty not negatived by any abandoned application. 59. Qualification of the last rule. 60. Successful prior applications. 61. Novelty not negatived by any un- published drawing, or prior model. 62. Novelty not negatived by any- thing substantially different. 63. Abandoned experiments. 64. Novelty in cases of designs. 65. Novelty not negatived by any- thing apparently similar or chemically identical, but prac- tically useless. 66. Novelty not negatived by an- tiquity of parts. 67. Novelty not negatived by prior accidental and not understood production. 68. Novelty not negatived by any thing neither designed, nor ap- parently adapted, nor actually nsed for the same purpose as the invention. CONTENTS. Vll R9. Comparative dates. 70. Dates of patented inventions. 71. Novelty is negatived by one in- stance of prior knowledge and use in this country. 72. Novelty is negatived by prior making without using. 73. Inventor's lack of knowledge of anticipating matter is imma- terial. 74. Old thing derived from new source. 75. Questions of novelty are ques- tions of fact. 76. Burden of proof relevant to novelty. CHAPTER IY. UTILITY Pages 52-56 77. Utility necessary to patentabil- ity. 78. Utility is negatived by lack of function. 79. Perfection not necessary to util- ity. 80. Beauty has utility. 81. Utility is negatived where func- tion is evil. 82. Functions which sometimes work evil, and sometimes work good. 83. Functions thought by some to be good, and by others to be bad. 84. Good functions in wrong places. 85. Doubts revel ant to utility to be solved against infringers. CHAPTER Y. ABANDONMENT Pages 57-71 86. The several sorts of abandon- ment. 87. Abandonment of inventions. 88. Actual abandonment of inven- tions. 89. Actual abandonment by express declaration. 90. Actual abandonment by formal disclaimer. 91. Actual abandonment resulting from laches before application. 92. Actual abandonment resulting from laches after application and before issue of letters patent. 93. Constructive abandonment be- fore application. 94. "Public use," denned and de- lineated. 95. Experimental use. 96. "On sale," delineated and de- fined. 97. Sale of inchoate right to a patent. 98. Degree of identity necessarily involved between the thing con- structively abandoned and the thing patented. 99. Making, works no constructive abandonment. 100. Public knowledge works no constructive abandonment. 101. Public use or sale in a foreign country. 102. Consent. 103. Constructive abandonment af- ter application, and before issue of letters patent. 104. Rules of constructive abandon- ment are inflexible. vni CONTENTS. 105. Surrender of letters patent. 106. Abandonment of invention af- ter letters patent, unknown to the law. 107. Acquiescence in unlicensed use of patented invention. 108. Questions of abandonment are questions of fact. CHAPTER VI. APPLICATIONS Pages 72-98 109. Constituents of applications for patents. 110. The petition. 111. Constituents of specifications. 112. The preamble. 113. The general statement of the invention. 114. The description of the draw- ings. 115. The detailed description of the invention. 116. The claim or claims. 117. Claims in machine patents. 118. Claims in patents for manufact- ures. 119. Claims in patents for composi- tions of matter. 120. Claims in process patents. 121. The signatures. 122. The form of the oath. 123. The constituents of the oath. 124. Affirmations. 125. The Patent-Office fees. 126. Drawings. 127. Models. 128. Specimens of compositions of matter. 129. Dates of applications. 130. The examination by the Patent Office. 131. Notification of rejection. 132. Appeals. 133. Appeals to the Supreme Court of the District of Columbia. 134. Bills in equity to compel the Commissioner to grant a pat- ent. 135. Amendment of applications. 136. The foundation of the right of amendment. 137. When an applicant may amend. 138. How an applicant may amend. 139. When an applicant must amend . 140. Interferences. 141. Number of interferences. 142. Decision on interference is not conclusive. 143. Caveats. 144. No appeal from the Commis- sioner in interference cases ; but relief by bill in equity. 145. Abandonment of applications. 146. Constructive abandonment of applications. 147. Constructive abandonment of application working construc- tive abandonment of invention. 148. Effect of Commissioner's de- cision on questions relevant to applications. CHAPTER VII. LETTERS PATENT Pages 99-1:54 149. No exclusive right to inven- tions, at common law. 150. Constitutional exclusive right 151. Patents are property. to inventions in the United States. CONTENTS. IX 152. Dignity of property in pat- ents. 153. Patents are not odious monopo- lies. 154. Patent rights are absolute, not qualified. 155. Patent rights are beyond State interference. 156. Patent rights are not subject to common law executions, but may be subjected by creditors' bills in equity. 157. Patent rights are as exclusive of the government, as they are of any citizen. 158. Patents do not cover specimens purchased of the inventor, or made with his knowledge and consent, before application therefor. 159. The foregoing rule has no ap- plication to patents for process- es. 160. Territorial scope of United States patents. 161. Operation of United States patents on the decks of ships. 162. Duration of patents. 163. Duration of United States pat- ents for inventions first patent- ed in a foreign country, accord- ing to the statute of 1870. 164. Duration of United States pat- ents for inventions first patent- ed in a foreign country, accord- ing to the statute of 1839. 165. Duration of United States pat- ents for inventions first patent- ed in a foreign country, accord- ing to the statute of 1861. 166. First opinion of the question stated in Section 165. 167. Second opinion of the question stated in Section 165. 168. Third opinion of the question stated in Section 165. 169. Keview of the three opinions of the question stated in Section 165. 170. Beginning of the terms of United States patents. 171. To whom letters patent are granted by the government. 172. Letters patent as documents. 173. The specification. 174. The description. 175. The description. 176. The claim or claims. 177. The claim or claims. 178. Particularity in descriptions and claims, are conditions pre- cedent to validity. 179. Questions of sufficiency of par- ticularity of descriptions and claims, are questions of fact and not Of law. 180. Plurality of inventions in one letters patent. 181. Construction of letters patent. 182. Claims to be construed in the light of descriptions. 183. Construction of functional claims. 184. Claims construed in the light of the state of the art. 185. Proper liberality of construc- tion. 186. Proper strictness of construc- tion. 187. Construction in the light of contemporaneous construction of the inventor. 188. Construction in the light of contemporaneous statutes 189. Questions of construction are questions of law and not of fact. 190. Letters patent presumed to be for same invention as the ap- plication therefor. 191. Letters patent are constructive notice of their contents to every person. CONTENTS. CHAPTER VIII. DISCLAIMERS Pages 135-146 192. Statutory authorization of dis- claimers. 193. Statutory prescriptions, rele- vant to disclaimers. 194. Errors which justify disclaim- ers. 195. Mistakes of fact, relevant to novelty. 196. Mistakes or law, relevant to in- vention. 197. Claims void for want of utility. 198. Combination claims. 199. Compound claims. 200. Immaterial claims. 201. Reissue claims. 202. Fraudulent or deceptive inten- tion. 203. Effect of unreasonable delay to file a disclaimer. 204. Beginning of unreasonable delay to file a disclaimer. 205. Costs, where a necessary dis- claimer has not been filed. 206. Extent of disclaimant's interest. 207. Construction of letters patent after a disclaimer. 208. Disclaimers filed pending lit- igation. 209. Disclaimers demanded by ju- dicial decisions. CHAPTER IX. REISSUES Pages 147-182 210. Beginning of the history of re- issues. 211. First statute providing for re- issues, 1832. 212. Reissues under the Patent Act of 1836. 213. Amendments made in the re- issue law, by the Patent Act of 1837. 214. Reissues under the Patent Act of 1870. 215. Reissues under the Revised Statutes. 216. Subjects of reissues. 217. The words "specification," " defective," and ' ' insufficient' ' defined. 218. Faults which justify reissues. 219. Faults in claims which justify reissues. 220. Inadvertence, accident, and mistake. 221. Question of the conclusiveness of the Commissioner's decision relevant to existence of reissua- ble faults, and relevant to the existence of inadvertence, acci- dent, or mistake. 222. The question of the last sec- tion discussed and supported in the affirmative. 223. The same question discussed and supported in the negative. 224. Great importance of the ques- tion. 225. The text writer's opinion of the true answer. 226. The doctrine of the case of Miller v. Brass Co. 227. The length of the delay contem- plated by the doctrine of Miller v. Brass Co. 228. Effect of delay in other cases than those of broadened claims. 229. The statute relevant to two years' prior use or sale, has CONTENTS. XI no application to reissues as such. 230. Surrender of patent. 231. Effect of surrender with, and also without reissue. 232. Eeissues of reissued patents and of extended patents, but not of expired patents, are proper. 233. Same invention. 234. Same invention does not in- clude whatever was produced by the patentee before the original patent. 235. Same invention is not con- fined to invention claimed in original. 236. Inventions shown in drawings and inventions shown in mod- els. 237. Inventions shown in drawings only. 238. Inventions shown in models only. 239. " Where there is neither model nor drawing." 240. New matter. 241. Rule for ascertaining same- ness of invention ; and qualifica- tions of that rule. 242. Reissues must be for same in- vention as prior reissues, and also for same invention as orig- inals. 243. Legal presumption of sameness of invention. 244. Omission, as it affects same- ness of invention. 245. Reissues for sub-combinations. 246. Reissues for single devices. 247. Reissues as affected by substi- tution of equivalents. 248. Reissues entitled to a liberal construction. 249. Reissued patents may be valid as to some claims while void as to others. 250. Executors, administrators, and assigns may procure reissues. 251. One of several executors may procure a reissue. 252. Rights of assignees in reissues, 253. The rights of grantees in re- issues. 254. The legal effect of reissued patents. CHAPTER X. EXTENSIONS Pages 183-194 255. Constitutional foundation of extensions. 256. Congressional extensions. 257. Mode of Congressional exten- sion. 258. Effect of Congressional exten- sions. 259. Patent Office extensions. 260. Statutory foundation of Patent Office extensions. 261. Who might apply for Patent Office extensions. 262. Points of time whereon Pat- ent Office extensions were grant- able. 263. Patent Office extension might be granted to an inventor-pat- entee, even if he had parted with all interest in the first term of his patent. 264. Patent Office extentions granta- ble only where inventors would possess, or at least participate in, the benefit thereof. 265. Patent Office extension, how effectuated. Xll CONTENTS. 266. Force of the Commissioner's decision in extension cases. 267. Facts which justify extensions. 268. Proceedings preliminary to ex- tensions. 269. Remedy for fraud in procuring or in granting extensions. 270. "The benefit of the extension of a patent shall extend to the as- signees and grantees of the right to use the thing patented, to the extent of their interest therein." 271. Adjudged meaning of the stat- ute quoted in the last section. CHAPTER XL TITLE Pages 195-215 272. The nature of titles, and the methods of their acquisition. 273. Title by occupancy. 274. Title by assignment. 275. Characteristics, authentication, and effect of assignments. 276. Dormant assignments. 277. Assignments of rights of action for past infringements. 278. Construction of assignments. 279. Reformation of assignments. 280. Assignments of extensions. 281. Recording and notice. 282. Warranty of title. 283. No implied warranty of validity. 284. Express warranties of validity. 285. Equitable titles ; how created. 286. Equitable titles ; how treated. 287. Title by grant. 288. Extra territorial rights convey- ed by grants. 289. Title by creditor's bill. 290. Title by bankruptcy. 291. Title by death. 292. -Tenancy in common. Joint- tenancy. 293. Joint-tenancy ; how severed. 294. Eights of tenants in common as against each other. 295. Partition. CHAPTER XII. LICENSES Pages 216 -227 296. Licenses denned and described. 297. Express licenses to make, with implied leave to use, or implied leave to sell the things made. 298. Express licenses to use, with implied leave to make for use. 299. Express licenses to sell, with implied leave to the vendees to use and to sell the things they purchase. 300. Licenses to make and use, with- out implied leave to sell. 301. Licenses to make and sell, or to nse and sell, with implied leave to the vendees to use and to sell the articles they buy. 302. Express licenses so restricted as not to convey implied rights. 303. Written and oral licenses. 304. Recording and notice. 305. Licenses given by one of sev- eral owners in common, and li- censes given to one of several joint users. 306. Construction of licenses. 307. Warranty and eviction. 308. Clauses of forfeiture. 309. Effects of forfeiture. CONTENTS. Mil 310. Assignability of licenses. 311. Purely implied licenses. 312. Implied licenses from conduct, and first by acquiescence. 313. Implied license from conduct by estoppel. 314. Implied license from actual re- covery of damages or profits. CHAPTER XIII. INTERFERING PATENTS Pages 228-233 315. Causes and characteristics of interfering patents. 816. Actions in equity between inter- fering patents. 317. The proper issue in such ac- tions. 318. The force of the decision of the Commissioner of Patents on a prior interference in the Patent- Office. 319. Injunctions in interference ac- tions. 320. The proper decrees in such actions. CHAPTER XIV. REPEAL OF PATENTS Pages 233, 234 321. Patents obtained by fraud, or granted by mistake. 322. Jurisdiction of equity to repeal patents so obtained or so grant- ed. 323. Practice in such cases. CHAPTER XY. QUI TAM ACTIONS Pages 235-240 324. Qui tarn actions, defined and described as they exist in the patent laws. 325. The wrongs which are the foundations of such actions. 326. The first two of those three classes of wrongs. 327. The third of those three classes of wrongs. 328. Wrongs of either class are com- pleted when the articles are illegally marked, without any subsequent using or selling. 329. The amount of the recoverable penalty. 330. The plaintiff must be one natural person. 331. The forum for qui tarn actions. 332. The form of the suit, and the requisites of a declaration, in such an action. 333. Injunctions to restrain the com- mission of wrongs of either of the first two classes. 334. Appeals in qui tain cases. XIV CONTENTS. CHAPTER XVI. INFRINGEMENT Pages 241-272 335. Infringement of process pat- ents, illustrated by the case of Tilghman v. Proctor. 336. Illustrated by the case of Mowry v. Whitney. 337. Illustrated by the case of Coch- rane v. Deener. 338. Equivalents in processes. 339. Infringement of patents for machines or manufactures. 340. Comparative results. 341. The test of comparative modes of operation. 342. Comparative modes of operation as illustrated by the case of the Cawood patent. 343. As illustrated by the Driven- Well cases. 344. As illustrated by Blanchard's patent for turning irregular forms. 345. As illustrated by Hayden's Brass-Kettle machine. 34G. As illustrated by the case of Burr v. Duryee. 347. Addition. 348. Transposition of parts. 349. Omission. 350. Substitution. 351. Equivalents inquired into. 352. The test of sameness of func- tion. 353. The test of substantial sameness of way of performance. 354. Question of the necessity of age in equivalents, stated and con- sidered in the light of the views of Justice CLIFFORD. 355. The same question considered in the light of the cases of Mason v. Graham and Clough v. Mfg. Co. 356. The same question considered in the light of sundry Circuit Court cases. 357. The same question considered in the light of the case of Potter v. Stewait. 358. Review of the question consid- ered in the last four sections. 359. Primary and secondary inven- tions in respect of the doctrine of equivalents. 360. Primary inventions considered in this respect. 361. Secondary inventions consid- ered in the same respect. 362. Review of the matters consid- ered in the last three sections. 363. Changes of form considered in respect of qiiestions of infringe- ment. 364. Subject of the last section illus- trated by the case of Strobridge v. Lindsay. 365. Illustrated by the case of Ives v. Hamilton. 366. Illustrated by the case of Morey v. Lockwood. 367. Illustrated by the case of the American Diamond Rock Boring Co. v. The Sullivan Machine Co. Illustrated by the case of Eliza- beth v. Pavement Co. Infringement of patents for compositions of matter. 370. Substitution of ingredients. 371. Substitution of ingredients as illustrated by the Giant-Powder cases. 3"2. Disclaimers of particular equi- valents. 373. Changes of the proportions in compositions of matter. 371. The various classes of composi- tions of matter. CONTENTS. XV 375. Infringement of patents for de- signs. 376. Comparative utility not a cri- terion of infringement. 377. Knowledge of a patent not a necessary element in its in- fringement. CHAPTER XVII. COURTS PARTIES AND CAUSES . .Pages 273-804 378. Introductory explanation. 379. Jurisdiction of United States courts of first resort in patent cases. 380. Question of the jurisdiction of State courts in patent cases stated. 381. Supported in the affirmative from ALEXANDER HAMILTON. 382. Supported in the negative from Justice STORY. 383. Supported in the affirmative from Justice WASHINGTON. 384. Supported in the negative from Chancellor KENT. 385. Supported in the negative from Justice FIELD. 386. Considered in the light of all the foregoing opinions. 387. Supported in the negative by the text-writer. 388. Jurisdiction of State courts over controversies growing out of contracts relevant to patents. 389. Jurisdiction of individual Unit- ed States courts of first resort in patent cases. 390. Exceptions to the rules of the last section. 391. Jurisdiction of the Court of Claims. 392. Question of the jurisdiction of the Court of Claims over causes of action based on unauthorized making, using, or selling by the United States Government of specimens of a patented process or thing. 393. Question of the jurisdiction of United States Circuit Courts over actions, brought against agents of the United States Government, and based on unau- thorized making, using, or sell- ing, by those agents, on behalf of the government, of speci- mens of a patented process or thing. 394. Who may be a plaintiff or com- plainant in a patent action. 395. Who may be plaintiff or com- plainant in an action based on an assigned accrued right of ac- tion for infringement. 396. Executors and administrators as plaintiffs and complainants. 397. Assignees of executors or ad- ministrators as plaintiffs and complainants. 398. Attorneys in fact cannot be nominal plaintiffs or complain- ants. 399. Owners in common as joint plaintiffs or complainants. 400. Licensees cannot be nominal plaintiffs, nor sole nominal com- plainants. 401. Who may be made a defendant in a patent action. 402. Minors, married women and lunatics as defendants. 403. Agents, salesmen, and employ- ees as defendants. 404. Employers as defendants. 405. Persons as defendants who have caused others to infringe. XVI CONTENTS 406. Joint infringers as defend- ants. 407. What facts constitute joint in- fringement. 408. Partners as defendants. 409. Private corporations as defend- ants. 410. Officers, directors, and stock- holders of corporations as de- fendants. 411. The same subject continued. 412. Stockholders of corporations. 413. Officers of corporations. 414. Directors of corporations. 415. Statutory liability of officers, directors, and stockholders of corporations. 416. Consolidated corporations as de- fendants in actions based on infringements committed by their constituent corporations. 417. Causes of action based on a plurality of patents, or on both terms of an extended patent. CHAPTER XVIII. Pages 305-386 418. Actions of trespass on the case. 419. The question of the propriety of actions of assumpsit for in- fringements of patents, consid- ered in the light of precedents. 420. Considered in the light of ex- pediency. 421. Forms of civil actions pre- scribed by State codes and statutes are not applicable to patent cases. 422. Declarations in trespass on the case. 423. The statement of the right of action, in respect of the in- ventor. 424. In respect of the novelty and utility of the invention. 425. In respect of the absence of public use or sale more than two years before application for a patent. 426. In respect of the patentee, where he is another than the inventor. 427. In respect of the application for the patent. 428. In respect of the letters patent. 429. In respect of a reissue. 430. In respect of a disclaimer. 431. In respect of an extension. 432. In respect of the plaintiff's title. 433. In respect of profert. 434. In respect of infringement. 435. In respect of the time of in- fringement. 436. In respect of the damages. 437. The conclusion of the decla- ration. 438. Substantial and not technical accuracy required in declara- tions. 439. Dilatory pleas. 440. Twenty-seven defences plead- able in bar in patent actions. 441. The twenty-seven defences re- viewed in respect of their na- tures and effects. 442. Special pleading. 443. The general issue accompanied by a statutory notice of special matter. 444. Notices of special matter. 445. Defences based on facts of which courts take judicial no- tice, need not be pleaded. 446. The first and second defences. 447. The third defence. 448. The fourth defence. CONTENTS. XVII 449. The fifth and sixth defences. 450. The seventh defence. 451. The eighth defence. 452. The ninth and tenth defen- ces. 453. The eleventh defence. 454. The twelfth defence. 455. The thirteenth defence. 456. The fourteenth defence. 457. The fifteenth defence. 458. The sixteenth defence. 459. The seventeenth defence. 460. The eighteenth defence. 461. The nineteenth defence. 462. The twentieth defence. 463. The twenty-first defence. 464. The twenty-second defence. 465. The twenty -third and twenty- fourth defences. 466. The twenty-fifth defence. 467. The twenty-sixth defence : estoppel. 468. Estoppel by matter of record : res judicata. 469. Estoppel by matter of deed. 470. The twenty-sixth defence ; how pleaded. 471. The twenty-seventh defence : statutes of limitation. 472. The national statute of limita- tion. 473. Its operation on rights of action based upon patents which expired prior to July 8, 1864 ; and on rights of action based upon patents which ex- pired between that day and JulyS, 1870. 474. Its operation on rights of action based upon infringe- ments committed before July 8, 1870, of patents which were in force on that day ; and on rights of action based upon in- fringements of patents commit- ted after that day and before June 22, 1874, 475. Its operation on rights of ac- tion based upon infringements of original terms of extended patents. 476. State statutes of limitation do not apply to any right of action which is attended to by the national statute ; that is, to any right of action based on an in- fringement committed before June 22, 1874. 477. The question of the applicabil- ity of State statutes of limita- tion to rights of action for in- fringements committed after June 22, 1874. 478. Explications, rejoinders, and sur-rejoinders, where licenses or releases are pleaded. 479. Eeplications, where the national statute of limitation is plead- ed. 480. Eeplications and rejoinders, where a State statute of limit- ation is pleaded. 481. The similiter. 482. Demurrers. 483. Demurrers to declarations. 484. Demurrers to pleas. 485. Demurrers to replications. 486. Joinders in demurrer. 487. Trial of actions at law for infringement of patents. 488. Trial by jury. 489. Eules of practice. 490. Eules of evidence. 491. Letters patent as evidence. 492. Eeissue letters patent are pri- ma fade evidence of their own validity. 493. Extensions of patents areprima facie evidence of their own va- lidity. 494. Letters patent presumed to be in force till the end of the term expressed on their face. 495. Evidence of title. XV111 CONTENTS. 496. Neither licenses, releases, nor omission to mark " patented ' need be negatived in a plain- tiff's prima facie evidence. 497. Evidence of the defendant's doings. 498. Expert evidence of infringe- ment. 499. Hypothetical questions for ex- perts. 500. Expert testimony relevant to the state of the art. 501. Cross-examination of experts. 502. Evidence of damages. 503. Defendant's evidence in chief. 504. Evidence to sustain the first defence. 505. To sustain the second de- fence. 506. To sustain the third defence, when based on prior patents 507. When based on prior printed publications. 508. When based on prior knowl- edge or use. 509. Rebutting evidence to the third defence, when based on prior knowledge or use. 510. Rebutting evidence to the third defence, however based. 511. Evidence to sustain the fourth defence. 512. To sustain the fifth defence. 513. The sixth defence. 514. The seventh defence. 515. The eighth defence. 516. The ninth defence. 517. The tenth defence. 518. The eleventh defence. 519. The twelfth defence. 520. The thirteenth defence. 521. The fourteenth defence. 522. The fifteenth defence. 523. The sixteenth defence. 524. The seventeenth defence. 525. The eighteenth defence. 526. The nineteenth defence. 527. The twentieth defence. 528. The twenty-first defence. 529. The twenty-second defence. 530. The twenty-third defence. 531. The twenty-fourth defence. 532. The twenty-fifth defence. 533. The twenty-sixth defence. 534. The twenty-seventh defence. 535. How testimony is taken in ac- tions at law. 536. When the judge may direct the jury to return a verdict for the defendant. 537. Instructions to juries. 538. Verdicts. 539. New trials. 540. Trials by a judge without a jury. 541. Trial by referee. 542. Judgments. 543. Costs. 544. Costs under the statute. 545. Attorney's docket fees. 546. Clerk's fees. 547. Magistrate's fees. 548. Witness fees. 549. Taxation of costs. 550. Writs of error. 551. Bills of exception. 552. Erroneous instructions, and refusals to instruct. 553. Exceptions to instructions, and to refusals to instruct. 554. Time when exceptions must be noted, and time when bills of exception must be drawn up and signed. CONTENTS. XIX CHAPTER XIX. .Pages 387-398 555. The generic measure of dam- ages. 556. Established royalties as specific measures of damages. 557. Tests applied to royalties, on behalf of defendants. 558. Tests applied to royalties on behalf of plaintiffs. 559. Money paid for infringement already committed, is no meas- ure of damages in another case. 560. Royalties reserved on sales of patents. 561. Royalties for licenses to make and use, and royalties for li- censes to make and sell. 562. Proportion of licensed to un- licensed practice of an invention. 563. Measure of damages in the ab- sence of an established royalty. 564. Damages for unlicensed making, without unlicensed selling or using. 565. Evidence of damages. 566. Indirect consequential dam- ages. 567. Exemplary damages. 568. Increased damages. 569. Actual damages not affected by infringement being unintended. 570. Counsel fees and other expen- ses, 571. Interest on damages. CHAPTER XX. ACTIONS IN EQUITY Pages 399-449 572. Jurisdiction of equity in patent causes. 573. Jurisdiction of equity to as- sess and decree damages. 574. The complainant. 575. The defendant. 576. Original bills. 577. The title of the court. 578. The introductory part. 579. The stating part. 580. The prayer for relief. 581. The interrogating part. 582. The prayer for process. 583. The signature. 584. The oath. 585. Bills to perpetuate testimony. 586. Amendments to bills, when al- lowed. 587. Amendments to bills, when necessary. 588. Demurrers, pleas, and answers. 589. Pleas in equity. 590. Arguments upon pleas, and replications to pleas. 591. Defences in equity cases. 592. Non- jurisdiction of equity. 593. The same subject continued. 594. Non-jurisdiction in equity, how set up as a defence. 595. Prior adjudication at law is not necessary to jurisdiction in equity. 596. Laches. 597. Laches, how set up. 598. The first of the twenty-seven defences. 599. The second defence. 600. The third defence. 601. The fourth defence. 602. The fifth and sixth defences. 603. The seventh defence. 604. The eighth defence. XX CONTENTS. 605. The ninth and tenth defences. 606. The eleventh defence. 607. The twelfth defence. 608. The thirteenth defence. 609. The fourteenth defence, 610. The fifteenth defence. 611. The sixteenth defence. 612. The seventeenth defence. 613. The eighteenth defence. 614. The nineteenth defence. 615. The twentieth defence, 616. The twenty-first defence. 617. The twenty-second defence. 618. The twenty-third defence. 619. The twenty-fourth defence. 620. The twenty-fifth defence. 621. The twenty-sixth defence. 622. The twenty-seventh defence. 623. Replications. 624. Subordinate bills in aid of original bills. 625. Supplemental bills. 626. Bills in the nature of supple- mental bills. 627. Bills of revivor. 628. Bills in the nature of bills of revivor. 629. Bills of revivor and supple- ment. 630. Leave of court to file supple- mental bills, and bills in the nature of supplemental bills. 631. Demurrers, pleas, and answers to supplemental bills and to bills in the nature of supple- mental bills. 632. Hearings. 633. Interlocutory hearings. 634. Questions of law arising on hearings. 635. Questions of fact arising on hearings. 636. Evidence in support of the bill. 637. Evidence in support of de- fences. 638. Testimony. 639. Depositions. 640. Depositions taken in other . cases. 641. Documentary evidence. 642. Trial by jury in equity cases. 643. Hearings by masters in chan- cery. 644. Interlocutory decrees. 645. Petitions for rehearings. 646. Rehearings for matter apparent on the record. 647. Rehearings on account of newly discovered evidence. 648. Supplemental bills in the na- ture of bills of review. 649. Final decrees. 650. Bills of review. 651. Bills of review to correct errors apparent on the pleadings or final decree. 652. Bills of review to introduce evidence discovered after the entry of the final decree. 653. Bills in the nature of bills of review. 654. Appeals. 655. Hearings on appeals. 656. Decisions on appeals. 657. Certificates of division of opin- INJUNCTIONS Pages 450-483 658. Jurisdiction to grant injunc- tions. 659. Preliminary injunctions [tions. 660. Bills for preliminary injunc- 661. Notices of motions for prelimi- nary injunctions. 662. Motions for preliminary in- junctions. CONTENTS. XXI 663. Suspensions of motions for preliminary injunctions. 664. Temporary restraining orders. 665. Elements of prima facie rights to preliminary injunctions. 666. Prior adjudication. 667. Public acquiescence. 668. Duration of public acquiescence in a strict monopoly. 669. Durationof public acquiescence in a licensed monopoly. 670. Public acquiescence need not be universal to be efficacious. 671. Decrees pro confesso. 672. Consent decrees. 673. Defendent's admission of va- lidity. 674. Interference decisions. 675. The complainant's title. 676. Infringement. 677. Defences to motions for pre- liminary injunctions ; and first by way of traverse. 678. Defences by way of confession and avoidance. 679. Averting effect of prior adjudi- cation. 680. Averting effect of public ac- quiescence. 681. Averting preliminary injunc- tion by proving repeal or ex- piration of patent, or fault in title thereto. 682. Averting preliminary injunc- tion by proving license. 683. By proving estoppel. 684. By showing laches. 685. Preliminary injunction must generally follow a cause and an application therefor. 686. Bonds instead of. injunctions, where complainant grants li- censes. 687. Where infringing machinery embodies non-infringing feat- ures ; also where it was con- structed under a junior patent. 688. Bonds required from complain- ants in certain cases. 689. Injunctions not averted by the existence of a remedy at law. 690. Injunctions pro confesso on withdrawal of opposition to a motion for an injunction. 691. Discretion of the court in granting or refusing injunc- tions. 692. Motions to dissolve preliminary injunctions. 693. Motions to dissolve for errors in point of law. 694. Motions to dissolve on account of newly discovered evidence. 695. Reinstatement of dissolved in- junctions. 696. Consequences of obedience or disobedience to injunctions which are subsequently dis- solved. 697. Permanent injunctions. 698. Refusal of permanent injunc- tion, because the patent has ex- pired. 699. Because the complainant has assigned the patent. 700. Because the defendant is dead, or. if a corporation, is dis- solved. 701. Cessation of infringement no ground for refusal to enjoin. 702. Postponement of permanent injunctions. 703. Suspension of permanent in- junctions. 704. Dissolution of permanent in- junctions. 705. Injunctions granted independ- ent of other relief ; but no in- junctions issued in trivial cases, nor to restrain complainants from suing third parties. 706. The duration of injunctions generally limited by the term of the patent. CONTEXTS. 707. The duration of injunctions granted by district judges in vacation. 708. Attachments for contempts. 709. Improper defences to motions for attachments. 710. Penalties for violations of in- junctions. CHAPTER XXII. PROFITS Pages 484-513 711. The infringer's profits recover- able in equity. 712. In cases of joint infringement. 713. In cases of infringement partly unprofitable. 714. What spaces of time an account of profits may cover. 715. The generic rule for ascertain- ing infringer's profits. 716. Complainant's damages no cri- terion of defendant's profits. 717. Defendant's profits in cases of unlawfully making and selling articles covered by the com- plainant' s patent. 718. Method of ascertaining cost of making and selling infringing articles. 719. Burden of proof when it is necessary to separate profits due to patented features, from profits due to other features, of an infringing article. 720. Method of making the separa- tion where defendant made and sold the patented invention separately, as well as in connec- tion with other things. 721. Method where defendant pays royalty for right to make and sell the features not covered by the patent in suit. 722. Cases where no separation is required or allowed. 723. Method of making the separa- tion by the criterion of com- parative cost. 724. Defendant's profits in cases of unlawfully selling articles partly or wholly covered by complain- ant's patent. 725. Defendant's profits in cases of unlawful using of patented processes or things, ascertained by the rule in Mowry v. Whit- ney. 726. Standards of comparison in respect of being open to the public. 727. In respect of being adequate to accomplish an equally beneficial result. 728. Recoverable profits may result from affirmative gains, or from saving from loss. 729. Affirmative gain. 730. Saving from loss. 731. Affirmative gain and saving from loss. 732. Standards of comparison need not have been used by the in- fringer. 733. A standard of comparison must have been known at the time of the infringement, but need not have been in existence at any earlier period. 734. Method of selecting the proper standard of comparison. 735. The rule in Mowry v. Whitney has no application to cases of infringement by making or by selling. CONTENTS. XX111 736. Questions of interest on in- fringers' profits, considered in the light of the Supreme Court precedents. 737. Considered in the light of Cir- cuit Court precedents. 738. Considered in the light of equitable doctrines and prin- ciples. 739. Proceedings before masters. 740. Evidence before masters. 741. Objections to evidence before masters. 742. Questions of the extent of the defendant's infringement. 743. Questions relevant to different sorts of defendant's alleged in- fringement. 744. Master's reports. 745. Exceptions to master' s report. 746. Defendant's exceptions to master' s reports. 747. Defendant's affirmative excep- tions to master's reports. 748. Defendant's negative excep- tions to master's reports. 749. Complainant's exceptions to master's reports. 750. Outline of practice relevant to master's findings. APPENDIX. THE PATENT STATUTES. THE REPEALED STATUTES Pages 517-597 Patent Act of 1790 PAGE .. 517 Patent Act of 1849 PAGE . 561 " 1793.. .. 521 1852 561 " 1794 .. 526 " Feb. 18, 1861.. . 562 1800 .. 527 March 2, 1861.. . 563 1819 .. 528 1862 . 570 July 3, 1832. .. 529 1863 . 570 July 13, 1832 .. 531 1864 . 571 1836 .. 532 1865 . 572 1837 . 546 1866 . 572 1839 . 553 1870 . 573 1842 .. 557 " March 3, 1871 . 597 1848.. . 559 " March 24. 1871 . 597 THE REVISED STATUTES , .Pages 598-624 PECTION 440. Clerks and employes. 441. Secretary of the Interior. 475. Establishment of the Patent Office. SECTION 476. Officers and employes. 477. Salaries. 478. Seal. [chief clerk. 479. Bonds of Commissioner and XXIV CONTENTS. 480. Restrictions upon officers and employes. 481. Duties of Commissioner. 482. Duties of examiners-in-chief. 483. Establishment of regulations. 484. Arrangement and exhibition of models, &c. 485. Disposals of models on rejected applications. 486. Library. 487. Patent-agents may be refused recognition. 488. Printing of papers filed. 489. Printing copies of claims, laws, decisions, &c. 490. Printing specifications and drawings. 491. Additional specifications and drawings. 492. Lithographing and engraving. 493. Price of copies of specifications and drawings. 494. Annual report of the Commis- sioner. 496. Disbursements for Patent-Of- fice. 629. Jurisdiction of Circuit Courts. 699. Writs of error and appeals, without reference to amount. 892. Copies of records, &c., of Patent- Office. 893. Copies of foreign letters- patent. 894. Printed copies of specifications and drawings of patents. 973. Costs where disclaimers are necessary. 4883. Patents, how issued, attested, and recorded. 4884. Their contents and duration. 4885. Date of patent. 4886. What inventions are patenta- ble. 4887. Patents for inventions previ- ously patented abroad. 4888. Requisites of specification and claim. SECTION 4889. Drawings, when requisite. 4890. Specimens of ingredients, &o. 4891. Model, when requisite. 4892. Oath required from applicant. 4893. Examination and issuing pat- ent. 4894. Limitation upon time of com- pleting application. 4895. Patents granted to assignee. 4896. When, and on what oath, exec- utor or administrator may ob- tain patent. 4897. Renewal of application in cases of failure to pay fees in season. 4898. Assignment of patents. 4899. Persons purchasing of invent- or before application may use or sell the thing purchased. 4900. Patented articles must be marked as such. 4901. Penalty for falsely marking or labelling articles as patented. 4902. Filing and effect of caveats. 4903. Notice of rejection of claim for patent to be given to ap- plicant. 4904. Interferences. 4905. Affidavits and depositions. 4906. Subpoenas to witnesses. 4907. Witness fees. 4908. Penalty for failing to attend or refusing to testify. 4909. Appeals from primary exam- iners to examiners-in-chicf . 4910. From examiners-in-chief to Commissioner. 4911. From the Commissioner to the supreme court, D. C. 4912. Notice of such appeal. 4913. Proceedings on appeal to su- preme court, D. C. 4914. Determination of such appeal and its effect. 4915. Patents obtainable by bill in equity. 4916. Re-issue of defective patents. CONTENTS. XXV SECTION 4917. Disclaimer. 4918. Suits touching interfering pat- ents. 4919. Suits for infringement ; dam- ages. 4920. Pleading and proof in actions for infringement. 4921. Power of courts to grant in- junctions and estimate dam- 4922. Suit for infringement where specification is too broad. 4923. Patent not void on account of previous use in foreign coun- try. 4924. Extension of patents granted prior to March 2, 1861. 4925. What notice of application for extension -must be given. SECTION 4926. Applications for extension to whom to be referred. 4927. Commissioner to hear and de- cide the question of exten- sion. 4928. Operation of extension. 4929. Patent for designs author- ized. 4930. Models of designs. 4931. Duration of patents for de- signs. 4932. Extension of patents for de- signs. 4933. Patents for designs subject to general rules of patent-law. 4934. Fees in obtaining patents, . Dodge 18 Wallace 193 Eureka Co. v. Bailey Co 11 Wallace 158 Evans v. Eaton 3 Wheaton 133, 324, 328, 360 Evans v. Eaton 7 Wheaton 384 Evans v. Hettich 7 Wheaton 371 Evans v. Jordan 9 Cranch 184 Everett v. Thatcher 3 Bann. & Ard 460 Evory v. Burt 15 Fed. Rep 260 Exparte Mann.. 17 Off. Gaz 113 Exparte Robinson 2 Bissell 105 Exparte Schollenberger 96 U. S 283 Falley v. Giles 29 Indiana 200 Farrington v Detroit 4 Fisher 193 Farrington v . Gregory 4 Fisher 220 Faulks v. Kamp 17 Blatch 204 Ferrett v. Atwill ; 1 Blatch 238, 239 Fischer v. Hayes 6 Fed. Rep 318, 352, 427 Fischer v. Hayes 16 Fed. Rep 510 Fischer v. Neil.' 6 Fed. Rep 197 Fitch v. Bragg 16 Fed. Rep 393 Flower v. Rayner 5 Fed. Rep 162 Footeu. Silsby 1 Blatch 328 Forbes v. Stove Co 2 Cliff 180 Forbush v. Bradford. . . .1 Fisher. . . .465, 468 XXXVI TABLE OF CITED CASES. Hames of Cases. Where reported. Pages in this book. Forbush v. Cook 2 Fisher 25 Forehand v. Porter 15 Fed. Rep 413 FOBS v. Herbert 1 Bissell 245, 254 Foster v. Lindsay 3 Dillon 230 Foster v. Moore 1 Curtis 459, 470 French v. Edwards 21 Wallace 376 French v. Rogers 1 Fisher 115, 166 Fry v. Quinlan 13 Blatch 87 Fry v. Yeaton 1 Cranch's Circuit Court Reports. 379 Fuller v. Yentzer 94 U. S 130, 252, 264 Gage v. Herring 107 U. S. 178, 373 Gaines v. Fuentes 92 U. S 278, 280 Gallahue v. Butterfield 10 Blatch 177 Gamewell Fire Alarm Telegraph Co. v. Brooklyn 14 Fed. Rep 217, 291 Gamewell Fire Alarm Telegraph Co. v, Chillicothe. . ." 7 Fed. Rep 303 Gardner v. Howe 2 Clif 112 Garretson v. Clark 15 Blatch 490 Garretson v. Clark 4 Bann. & Ard 506 Gay v. Cornell 1 Blatch 87, 196 Gayler v. Wilder 10 Howard 42, 48, 67, 196, 197, 207, 216, 291 Gelpcke v. Dubuque 1 Wallace 318 Gear v. Fitch 3 Bann. & Ard 201 Gear v. Grosvenor 1 Holmes 189, 190 Giant Powder Co. v. Vigor! t Pow- der Co 6 Sawyer 161 Gibson v. Cook 2 Blatch 200, 202 Gibson v. Gifford 1 Blatch 185 Gibson v. Harris 1 Blatch 166 Gibson v. Van Dresar 1 Blatch 456, 468, 470 Gilbert & Barker Mfg. Co. v. Bussing. 12 Blatch 227, 470 Gill v. Wells 22 Wallace 77, 176, 177, 252, 258 Gillespie v. Cummings 3 Sawyer 303 Gilmore v. Golay 3 Fisher 232 Gilpin v. Consequa 3 Washington 398 Glue Co. v. Upton 97 U. S 23 Godfrey v. Eames 1 Wallace 95 Goff v. Stafford 3 Bann. &Ard 118 Gold and Silver Ore Co. v. Disin- tegrating Ore Co 6 Blatch 228 Goldsmith v. Collar Co 18 Blatch 291 Goodyear v. Allyn 6 Blatch 366, 406, 424, 465 Goodyear v. Berry 3 Fisher 456, 464 Goodyear v. Bishop 4 Blatch 292 TABLE OF CITED CASES. XXXV11 Names of Cases. Where reported. Pages in this book. Goodyear v. Bishop 2 Fisher 387, 393, 398 Goodyear v. Gary 4 Blatch 201 ^Goodyear v. Hills 3 Fisher 470 Goodyear v. Hullihen 3 Fisher 179 Goodyear v. McBurney 3 Blatch 291 Goodyear v. Mullee 5 Blatch 294, 457, 482 Goodyear v. Phelps 3 Blatch 298 Goodyear v. Railroad Co 1 Fisher 207, 456 Goodyear v. Beverly Rubber Co 1 Cliff 193 Goodyear v. Congress Rubber Co 3 Blatch 225, 466 Goodyear v. Rust 3 Fisher 456 Goodyear Dental Vulcanite Co. v. Davis 3Bann. & Ard 433 Goodyear Dental Vulcanite Co. t;. Evans 3 Fisher 456 Goodyear Dental Vulcanite Co. v. Folsom 5 Bann. & Ard 479 Goodyear Dental Vulcanite Co. v. Willis 1 Bann. & Ard 434 Gordon u. Anthony 16 Blatch 289, 311 Gorham v. White 14 Wallace 270 Goss v. Cameron ; 14 Fed. Rep 6 Gottfried v. Crescent Brewing Co 13 Fed. Rep 413 Gottfried v. Philip Best Brewing Co. .5 Bann. & Ard 362 Gottfried v. Miller 104 U. S 198 Gottfried v. Moerlein 14 Fed. Rep 413 Gould v. Rees 15 Wallace - 177, 257 Gould v. Spicer 15 Fed. Rep 178, 373 Gould's Mfg. Co. v. Cowing 12 Blatch 490 Graham v. Mason 1 Holmes 486, 491 Graham v. Mason 5 Fisher 260 Graham -o. Mfg. Co 11 Fed. Rep 64, 129, 402 Graham v. McCormick 5 Bann. & Ard. 64, 95, 129 Grant v. Raymond 6 Peters 68, 97, 128, 148, 155, 165, 181, 191, 324, 373 Gray v. James 1 Peters' Circuit Court Reports, 69, 314, 363 Gray v. Railroad Co 1 Wool-worth 480 Green v. Austin 22 Off. Gaz 293 Green v. Biddle 8 Wheaton 102 Greene v. Bishop 1 Cliff 512, 513 Green v. French 4 Bann. & Ard 415, 456, 467, 468 Green v. French 11 Fed. Rep 50, 51 Green v. Gardner 22 Off. Gaz 294 Greenleaf v. Mfg. Co 17 Blatch 391 Greenwood v. Bracher 1 Fed. Rep 462 Griggs v. Gear 3 Gilman (Illinois) 444 XXXV111 TABLE OF CITED CASES. Names of Cases. Where reported. Pages in this book. Grover & Baker Sewing Machine Co. v. Williams 2 Fisher 453, 456, 458, 459, 460 Guidet v. Brooklyn 105 U. S 23 Guidet v. Palmer 10 Blatch 469 Guille v. Swan 19 Johnson (N. Y.) 295 Guyon v. Serrell 1 Blatch 396 Hailes v. Albany Stove Co 16 Ft d. Rep 138 Hailes v. Van Wormer 20 Wallace 24 Hall v. Macneal ..107 U. S 27, 64 Hall v. Wiles. 2 Blatch 140, 396 Hamilton v. Kingsbury 15 Blatch 220, 224 Hamilton v. Kingsbury 17 Blatch 217, 220, 221 Hamilton v. Rollins 3 Bann. & Ard 199 Hamilton v. Simons 5 Bissell 482 Hammerschlag v. Garrett 10 Fed. Rep 245 Hammerschlag v. Scamoni 7 Fed. Rep 39 Hammond's Appeal 2 Off. Gaz 86 Hammond v. Hunt 4 Bann. & Ard 292 Hammond u. Organ Co 92 U. S ... 225 Hanger v. Abbott 6 Wallace 302 Hapgood v. Hewitt ' 11 Fed. Rep 196 Harding v. Handy ' 11 Wheaton 512, 513 Harmon v. Bird 22 Wendell (N. Y.) 198 Harper v. Butler 2 Peters 290 Harris v. Allen 15 Fed. Rep 253 Harris v. Clark 10 Ohio 212 Hartell v. Tilghman 99 U. 8 282 Hartshorn v. Day 19 Howard 199 Harwood v. Mfg. Co 3 Fisher 260 Haselden v. Ogden 3 Fisher 396 Hatch v. Moffitt 15 Fed. Rep 6, 21 Hathaway v. Roach 2 Woodbury & Minot 378, 380, 381 Hausknecht v. Claypool 1 Black 213, 302, 342, 348, 383 Hawes v. Antisdel 2 Bann. & Ard 50 Hawes v. Cook 5 Off. Gaz 434 Hayden v. Oriental Mills 15 Fed. Rep 302, 341 Hayes v. Dayton .8 Fed. Rep 303 Hayes v. Leton 5 Fed. Rep 461 Hayes v. Seton 12 Fed. Rep 164 Hayward v. Andrews 106 U. S 216, 289, 414 Hayward u. Andrews 12 Fed. Rep 199, 414 Hazelip v. Richardson 10 Off. Gaz 86 Heald v. Rice 104 U. S 27, 171 Hebert v. Joly 5 Louisiana 406 Heckers v. Fowler . . . .2 Wallace 347, 348, 377, 382 TABLE OF CITED CASES. XXXIX Names of Cases. Where reported. Pages in this book. Henderson v. Stove Co 2 Bann. & Ard 130 Hendrie v. Sayles 98 U. S 121, 196, 201, 206, 311 Henry v. Soap-Stone Stove Co 5 Bann. & Ard 64, 84 Henry v. Stove Co ' , 2 Bann. & Ard 288 Henry v. Tool Co 3 Bann. & Ard 113 Herbert v. Butler 97 U. S 383 Herring v. Gage 3 Bann. & Ard 486, 487 Herring v. Nelson. . 3 Bann. & Ard. 176 Hewitt v. Swift 3 Allen (Mass.) 300 Hiatt v. Twomey 1 Devereux & Battle's Equity Cases (N. C.) 204 Hicks v. Kelsey 18 Wallace 21 Hill v. Epley 31 Penn. State 226 Hill v. Thuerner 13 Indiana 198 Hill v. Whitcomb 1 Holmes.. 216 Himely v. Rose 5 Cranch 447 Hipp v. Babin 19 Howard 286, 414, 448 Hitchcock v. Tremaine 9 Blatch 441, 442 Hitchcock u. Tremaine 4 Fisher 130 Hockholzer v. Eager 2 Sawyer 467 Hodge v. North Missouri Railroad Co 1 Dillon 210 Hodge v. Railroad Co 6 Blatch 193, 285, 289, 455, 466, 469 Hoe v. Boston Daily Advertiser 14 Fed. Rep 469 Hoe v. Kahler 12 Fed. Rep 79 Hoeltge v. Hoeller 2 Bond 229 Hoffheins v. Brandt. 3 Fisher 179 Hogg v. Emerson 6 Howard 129 Hogg v. Emerson 11 Howard 130, 374 Holbrook v. Small 3 Bann. & Ard 398 Holden v. Curtis 2 New Hampshire 198, 202 Holliday v. Pickhardt 12 Fed. Rep 462 Holt v. Keeler 13 Fed. Rep 164 Herman Patent Mfg. Co. v. Rail- road Co 15 Blatch 303 Hotchkiss v. Greenwood 11 Howard 21 Hotchkiss v. Greenwood 4 McLean 35 Hotchkiss v. Oliver 5 Denio (N. Y.) 330 Houston v. Moore 5 Wheaton 275, 278, 279 Howeu. Morton 1 Fisher 463, 469, 470 Howe v. Russell 36 Maine 513 flowe v. Williams 2 Cliff 245 Howes v. McNeal 3 Bann. & Ard 60, 95 Howes v. McNeal 5 Bann . & Ard 40 Howes v. Nute 4 Cliff 311, 397 Hubbell u. De Land 14 Fed. Rep 409, 422 Hudson v. Draper 4 Fisher 353 Xl TABLE OF CITED CASES. Names of Cases. Where reported. Pages in this book. Hughes v. Blake 6 Wheaton 411, 426 Hull v. Commissioner of Patents. . . .7 Off. Gaz ... .85, 88 Hull v. Commissioner of Patents. . . .8 Off. Gaz 85, 88 Humiston v. Stainthorp 2 Wallace 439 Humphreys v. Douglass 10 Vermont 293 Hunnicutt v. Peyton 102 U. S 386 Hussey v. Whiteley 2 Fisher . 473 Ulingworth v. Spaulding 9 Fed. Hep 37 Imhaeuser v. Buerk 101 U. S 45, 253, 255, 259 Imlay v. Kailroad Co 4 Blatch 311 India-Rubber Comb Co. v. Phelps. . .4 Fisher 441 Indianapolis & St. Louis Railroad Co. v. Hoist 93 U. S 385 Ingalls v. Tice 14 Fed. Rep 291 Ingersoll v. Jewett 16 Blatch 336 Ingersoll v. Musgrove 3 Bann . & Ard 393 In re Hemiup 3 Paige (N. Y.) 512, 513 In re John J. Squire 3 Bann. & Ard 88 Insurance Co. v. Eggleston 96 U. S 223 Insurance Co. v. Lanier 95 U. S 383 Insurance Co. v. Sea 21 Wallace 375, 376 Irwin v. McRoberts 4 Bann. & Ard 469 Isaacs v. Cooper 4 Washington 460 Ives v. Hamilton 92 U. S 266 Jacob v. United States 1 Brockenbrough 239, 240 Jacobs v. Baker 7 Wallace 14 Jacobs v. Hamilton County 4 Fisher 292 James v. Campbell 104 U. S 101, 107, 161, 287, 364 Jenkins v. Greenwald 2 Fisher 311, 464, 477, 488 Jennings v. Kibbe 10 Fed. Rep 353 Jennisons v. Leonard 21 Wallace 376 Johnsen v. Fassman .1 Woods 60 Johnson v. McCullough 4 Fisher 41, 188 Johnson v. Railroad Co 105 U. S 164, 176 Johnson v. Root 1 Fisher 353 Johnson v. Root 2 Clif 257, 374 Jolliffe v. Collins 21 Missouri 205 Jones v. Bank 5 How. (Miss.) 472 Jones v. Barker 11 Fed. Rep 62, 132 Jones v. Buckell 104 U. S 384 Jones v. Morehead 1 Wallace 447 Jordan v. Dobson 2 Abbott's U. S. Reports 176, 184, 185, 191, 476 Judson v. Bradford . . . .3 Bann. & Ard 389, 392 TABLE OF CITED CASES. xi Names of Cases. Where reported. Pages in this book. Judson v. Cook 11 Barbour (N. Y.) 294 Judson v. Cope 1 Fisher 38 Kelleher v. Darling 3 Bann. & Ard 61 Kellsu. McKenzie 9 Fed. Rep 170 Kendall v. Winsor 21 Howard 58, 59, 70, 104, 107 Kendrick v. Emmons 2 Bann. & Ard 113, 124 Kendrick v. Einmons .3 Bann. & Ard 254 Kendrick v. United States 1 Gallison 239 Keplinger v. De Young. 10 Wheaton 295 Kerosene Lamp Heater Co. v. Fisher 5 Bann. & Ard 507 Kerosene Lamp Heater Co. v. Lit- tell 3 Bann. & Ard 170, 174, 176 Ketchum Harvester Co. v. Johnson Harvester Co 8 Fed. Rep... 394 Keystone Bridge Co. v. Iron Co 95 U. S -. 133 King v. Cement Co 6 Fisher 260 King v. Frostel 4 Bann. & Ard 20 Kinsman v. Parkhurst 18 Howard 447 Kirby v. Armstrong 19 Off. Gaz 491 Kirby v. Mfg. Co 10 Blatch 176 Kirby Bung Mfg. Co. v. White 1 McCrary 456, 463, 469 Klein v. Russell 19 Wallace 56, 132, 175, 351, 372 Knapp v. Shaw 15 Fed. Rep 438 Knight v. Railroad Co Taney's Circuit Ct. Decisions, 163, 175 Knox v. Loweree 1 Bann. & Ard 60 Knox v. Quicksilver Mining Co 6 Sawyer 252, 487, 498, 508 Konold v. Klein 3 Bann. & Ard 350 La Baw v. Hawkins 2 Bann. & Ard 387, 391, 490, 492 Leake v. Gilchrist 2 Devereaux (N. C.) 290 Lee v. Blandy 2 Fisher 352 Leggett v. Avery 101 U. S 59, 156, 175, 364 Le Fever v. Remington 13 Fed. Rep 133, 252 Leffingwell v. Warren 2 Black 302 Lehnbeuter v. Holthaus 105 U. S 56 Lenox v. Roberts 2 Wheaton 289 Le Roy v. Tatham 14 Howard 125 Lewis v. Johns 34 California 295 Lewiston Falls Mfg. Co. v. Frank- lin Co 54 Maine 452 Lexington & Ohio Railroad Co. v. Applegate 8 Dana (Ken. ) 475 Liddle v. Cory 7 Blatch 481, 482 Liggett & Myers Tobacco Co. v. Miller. . 1 McCrary 229 xlii TABLE OF CITED CASES. Names of Cases. Where reported. Pages in this book. Lightner v. Railroad Co 1 Lowell 224 Lindsay r. Stein 10 Fed. Rep 96 Little f. Downing 37 New Hampshire 366 Littlefield v. Perry 21 Wallace 166, 206, 207, 291, 292, 402, 503 Livingston v. Jones 1 Fisher 353 Livingston v. Woodworth 15 Howard 485 Lockwood u. Cleveland 6 Fed. Rep 230 Locomotive Safety Truck Co. v. Railroad Co 2 Fed. Rep 398, 401, 487,498 Locomotive Truck Co. v. Railway Co. . 10 Blatch 304 Loercher v. Crandal 11 Fed. Rep 254 Loom Co. v. Higgins 105 U. S 20, 47, 123, 134, 330, 363 Loomis v. Loomis 26 Vermont 202 Lorillard v. Ridgway 4 Bann. & Ard 20 Lovellt-. Davis 101 U. S 384 Lowell Mfg. Co. v. Hartford Carpet Co 2 Fisher 478 Ludwig v. Stewart 32 Michigan 343 Lull v. Clark 13 Fed. Rep 130 Lyel v. Miller 6 McLean 378 Lyman Ventilating and Refrigerator Co. v. Lalor 1 Bann. & Ard 40 Mabie v. Haskell 2 Cliff 30, 246, 253 Macaulay v. Machine Co 9 Fed. Rep 464 Machine Co. v. Murphy 97 U. S 254, 259 MacKay v. Jackman 12 Fed. Rep 5 Mackaye v. Mallory 12 Fed. Rep 199 Magic Ruffle Co. v. Douglas 2 Fisher 54, 393 Mahn v. Harwood 3 Bann. Revised Statutes, Section 4912. 4 Brunner's Appeal, 1 Off. Gaz. CHAP. VI.] APPLICATIONS. 87 of the thing for which a patent is demanded. 1 The court, thereupon, hears the case in a summary way, on the evidence produced before the Commissioner, and confines its revision of the Commissioner's decision to the points set forth in the applicant's reasons of appeal. Having decided the questions involved, the court gives the Commissioner a certificate of its proceedings and decisions, which, being entered of record in the Patent Office, governs the further proceedings in the case. !No such decision, however, precludes any person from con- testing the validity of any patent issued in pursuance there- of, in any court wherein that validity may be called in ques- tion. 5 134. "Whenever a patent is refused by the Commissioner of Patents, or by the Supreme Court of the District of Co- lumbia, on appeal from the Commissioner, the applicant may file a bill in equity in any United States Circuit Court hav- ing or acquiring jurisdiction of the parties. 3 The complain- ant in that hill may be the inventor- applicant, or, in case of an assignment of the invention, he may be the assignee, because the latter is considered to be an applicant within the meaning of the law on this subject. 4 If there is no opposing party, a copy of the bill is required to be served on the Com- missioner. The court thereupon has jurisdiction to adjudge that the applicant is entitled to receive a patent for his inven- tion, as specified in his claim, or for any part thereof, as the facts in the case may appear to be ; and such an adjudication, if made, authorizes the Commissioner to issue such a patent, on the applicant's filing in the Patent Office a copy of the ad- judication, and otherwise complying with the requirements of the law. 5 But no court has any jurisdiction to restrain the Commissioner from issuing a patent to the defendant, in any such case as those treated in this section." In order to decide the issues of such a bill in equity as is 1 Revised Statutes, Section 4913. 4 Gay v. Cornell , 1 Blatch. 508, 8 Revised Statutes, Section 4914 ; 1849. Fry v. Quinlan, 13 Blatch. 205, 1875. 6 Revised Statutes, Section 4915. 3 Revised Statutes, Section 4915, Whipple v. Miner, 15 Fed. Rep. and Section 629, 1T 9. 117, 1883. 88 APPLICATIONS. [CHAP. vi. treated in this section, the court where the hill is pending will take testimony, and any other admissible evidence, ac- cording to the course of courts of equity, and will also con- sider whatever was before the Patent Office in the proceed- ings which resulted in the refusal to grant a patent, and if the case has been before the Supreme Court of the District of Columbia, will also consider the proceedings which took place in that tribunal. 1 The litigation explained in this section, is therefore original and not appellate litigation. It may be re- sorted to, as a concurrent remedy with appeal to the Supreme Court of the District of Columbia, whenever the Commis- sioner affirms an adverse decision of the board of examiners- in-chief. Where an application is brought before the Com- missioner otherwise than by such an appeal, and he withholds the patent by virtue of his general supervisory authority, the remedy now under consideration is the only one to which the applicant can resort, for no appeal lies to the Supreme Court of the District of Columbia, nor can any writ of mandamus be granted by that tribunal, to compel the Commissioner to issue a patent in such cases. 9 135. The right to amend applications for patents is one of great value and frequent exercise, but it has never been expressly established by any statute. No statute prior to that of 1836 even mentioned the subject, and that statute only provided that whenever it appeared to the Commissioner, that one or more of the claims of an application were inadmissible for want of novelty, or that the description was defective and insufficient, he should notify the applicant thereof, and should furnish him with such information as might be useful in judging of the propriety of altering his specification, so as to exclude that part of the subject matter found not to be new.' No change relevant to this point was made in the statute till 1870, when, in the place of the foregoing provision, it was enacted that whenever any claim was rejected, for any 1 In re John J. Squire, 3 Bann. G LETTERS PATENT. [CHAP. VTI. to regulate the making, the selling and the using of the things covered by any patent right, to the same extent that it law- fully regulates the making, selling and using of similar unpat- ented things. Things covered by patents are as much subject to the revenue laws, ' and other public laws 2 of a State or municipality, as any other things. A patent for a dynamite powder, or for a deadly poison, or for an explosive oil, does not oust nor affect the power of local authorities to prescribe the place and manner of the manufacture, storage and sale of those dangerous substances. Nor does a patent on a sewing- machine exempt the patentee from any State tax on the machines he may make, use or sell within the boundaries of that State. The reason why a State may regulate the sale of a patented thing, and may not regulate the sale of the patent covering that thing, is explainable as follows. A patentee has two kinds of rights in his invention. He has a right to make, use and sell specimens of the invented thing ; and he has a right to prevent all other persons from doing either of those acts. The first of these rights is wholly independent of the patent laws ; while the second exists by virtue of those laws alone. 3 A patentee therefore holds the first of these rights subject to the police powers, and the taxing powers, of the State ; while the second, being the creature of the laws of Congress, is wholly beyond State control or interference. 156. Patent rights, being, as they are, intangible property, cannot be seized and sold under the authority of any writ of fieri facias, or other common law execution. 4 They may, however, be reached by a creditor's bill in equity, and thus be applied to the payment of the debts of the owners ; the same as trust property, choses in action, or stock of a debtor in a corporation, may be reached and applied. A court of equity may, in pursuance of its powers in such cases, decree that the debtor patentee pay the judgment upon which the 1 Webber u. Virginia, 103 U. S. ard, 539, 1852. 347, 1880. 4 Stephens v. Cady, 14 Howard, 4 Patterson v. Kentucky, 97 U. S. 528, 1852 ; Stevens v. Gladding, 17 505, 1878. Howard, 447, 1854. 8 Bloomer v. McQuewan, 14 How- CHAP. VII.] LETTERS PATENT. 107 bill is based, or in default thereof, that his patent right be sold under the direction of the court, and an assignment thereof be executed by him, and in default of his executing such an assignment, that some suitable person be appointed trustee to execute the same in his place. 1 157. Patent rights are exclusive, not only of citizens and residents of the United States ; but also of the government itself and of its agents. The government has no more right than any private citizen, to make, use or sell a patented in- vention, without the license of the patentee. 2 When the government grants letters patent for an invention, it confers upon the patentee an exclusive property therein, which cannot be appropriated or used by the government itself, without just compensation, any more than land which has been pat- ented to a private purchaser can, without compensation, be appropriated or used by the government. 3 158. No patent right covers any use or sale of any speci- men of the patented thing, which was purchased of the in- ventor, or made by another with his knowledge and consent, before his application for a patent therefor." Where another than the inventor, surreptitiously obtains knowledge of an in- vention, and, without the consent of the inventor, makes a specimen of the invented thing before any patent thereon is applied for, that specimen is covered by a patent for that in- vention, as truly and as fully as it would be if it had been made by an infringer after the date of that patent. Such a case is clearly outside of the rule just stated, and of the statute upon which that rule is based. Indeed Justice STOKY," and after- ward the full Supreme Court, 8 held such a case to be out- side the corresponding provision of the Patent Act of 1 Ager v. Murray, 105 U. S. 126, < Revised Statutes, Section 4899 ; 1881. Wade v. Metcalf, 16 Fed. Rep. 130, * United States v. Burns, 12 Wai- 1883. lace, 252, 1870 ; Cammeyer v. New- 5 Pierson v. Screw Co. 3 Story, ton, 94 U. S. 234, 187G ; McKeever v. 402, 1844. United States, 23 Off. Gaz. 1527, 1879. 6 Kendall v. Winsor, 21 Howard, 3 James v. Campbell, 104 U. S. 356, 326, 1858. 1881. 108 LETTERS PATENT. [CHAP. VII. 1839, though that provision did not literally exclude such a case. Where another than the first inventor, re-invents and con- structs a specimen of an invention, before any patent is applied for thereon, and does so without any knowledge of the in- ventor, or of his doings, and without the knowledge or con- sent of the inventor himself, he cannot invoke the rule stated at the beginning of this section ; because knowledge and con- sent of the inventor is an express element in the statute which supports that rule. If, however, such a re- invention and such a construction occurred before July 8, 1870, the thing so constructed is outside of any patent afterward applied for, be- cause the Patent Act of 1839 can be invoked in its behalf, and because the corresponding provision of that act was not limited to cases where the inventor had knowledge and gave consent. Where such a re-invention and construction occurred after July 8, 1870, it is probable that the specific thing, so con- structed, is taken out of the operation of a patent afterward applied for, by the direct action of the fifth amendment to ^the Constitution of the United States. That amendment pro- vides that no person shall be deprived of property without due process of law. Things independently re-invented and inno- cently made, before the first inventor applied for a patent thereon, are the lawful property of him who thus made them. To deprive him of the right to use and to sell those things, would be to lessen or to destroy their value, and thus to de- prive him of property rights. If such an act is ever done at the suit of the first inventor, after he gets his patent, it will be done by virtue of that patent. Now a patent is the creature of a statute. No statute is " due process of law," a and no patent can be " due process of law" unless a creature can be greater than its creator : unless a statute can authorize a con- tract to accomplish upon the rights of third parties, a result which the statute itself is forbidden to accomplish. If this 5 Statutes at Large, Ch. 88, Sec- 247, 1833 ; Taylor v. Porter, 4 Hill tion 7, p. 354. (N. Y.) 147, 1843. 3 Barren v. Baltimore, 7 Peters, CHAP. VII.] LETTERS PATENT. 109 reasoning, and this conclusion, is correct, it will not follow therefrom, that such a re-inventor may construct any specimen of the invention after the first inventor has obtained a patent thereon. To deprive a re-inventor of such a privilege, is not to deprive him of property, for no re-inventor has any prop- erty right in an invention which he was the second in the United States to make, any more than he would have, if he had learned of that invention from a newspaper or from a book. 159. The rule stated at the head of the last section does not apply to any process patent. The provision of 18YO, 1 and Section 4899 of the Eevised Statutes, treat only of machines or other patentable articles, and confer exemption from the operation of patents upon nothing but specific things. Now a process is neither an article nor a thing. It is a series of acts. It is therefore outside the language of the law on this subject. It is also outside the reason of that law. That rea- son is as follows. Where another than the first inventor of a particular tangible thing, buys from the inventor a specimen of that thing, or makes such a specimen with his consent, or . re-invents and makes such a specimen independently of the first inventor, that specimen ought to be exempt from any patent afterward applied for by the first inventor ; because, if it is not so exempt, it will become worthless in the hands of one who honestly expended of his substance to procure it, and who procured it without violating any patent or any law. Processes are not subjects of these considerations. A process cannot be purchased. The right to practise a patented proc- ess can indeed be purchased ; but the right to practise an un- patented process, while it remains unpatented, cannot be the subject of a sale, because that right belongs to every one with- out any purchase. So also, if an inventor of a process con- Bents that another person mayvpractise that process, before the inventor applies for a patent, that fact furnishes no reason why that person should be allowed to practise that process, against the will of that inventor, after the date of his patent. To deprive such a person of such a privilege, is not to deprive 1 16 Statutes at Large, Ch. 230, Section 37, p. 203. 110 LETTERS PATENT. [CHAP. VH. him of the use of a thing. It is only to deprive him of the privilege of repeating a series of acts. These considerations apply also to cases where a re-inventor produces and practises a process, after its production by the first inventor, and before any application is made for a patent thereon, and without any knowledge of the first inventor or his doings. Such a re-in- ventor has no more natural right to practise that process after a patent is granted to the first inventor, than any other person has. He has no such right growing out of the fact that he was a re-inventor, because the patent laws do not reward re-in- ventors, and because patents to first inventors are exclusive of re-inventors, as well as of other persons. He has no such right growing out of rights of property, because to deprive him of the privilege of repeating the process is not to deprive him of the use of any tangible property, and because he has no intangible property in the process itself. The language of the Patent Act of 1839 ' was. however, different from that of the Act of 18 TO, and of the Revised Statutes, on the point treated in this section. The earlier Act contained a considerable clause which is not in either of the others, and which induced the Supreme Court to decide that the earlier statute applied to patents for processes, as well as to patents for things. 8 The reasoning of Justice BALDWIN, in the case, was never convincing to the present text writer. It was spoken of by Justice STORY as " certainly general ;" 8 and Judge WHEELER has well said that "it is not probable that McClurg v. Kingsland would be followed beyond cases of its class, upon the same statute." * As far as McClurg v. Kings- land construed the Act of 1839, and applied that Act to the very case then at bar, it is entitled to loyal respect and obedi- ence, even from those who cannot follow its reasoning. But McClurg v. Kingsland is no guide to the meaning of the present statute on the subject, because that statute is substan- tially different from the one construed in that case, and be- 1 5 Statutes at Large, Ch. 88, Sec- 8 Pierson v. Screw Co. 3 Story, tion 7, p. 354. 408, 1844. 4 McClurg v. Kingsland, 1 Howard, 4 Brickill v. New York, 5 Bann. & 202, 1843. Ard. 547, 1880. CHAP. VII.] LETTERS PATENT. Ill cause the reasoning of that case has no convincing force when applied to the language of the now existing statute. 160. Every United States patent is in general co-exten- sive, in point of the territory it covers, with the territory cov- ered by the jurisdiction of the United States. 1 Every such patent, therefore, covers the use of the patented thing in or under the tide waters of the United States ; and that, too, even in cases where the government has granted to others than the patentee, the exclusive right to do, at a particular place, the particular thing which the patented invention is adapted to accomplish. 4 In the case just cited the complainant had a patent on a certain submarine telegraph cable ; and the de- fendant had a grant from Congress, giving it the sole right, for fourteen years, to lay, construct, laud, maintain and operate, telegraphic cables in and over the waters, reefs, islands, shores and lands, over which the United States have jurisdiction, from the shores of Florida to the island of Cuba. Under these circumstances Justice BLATCHFORD decided that the defendant acquired by its grant, no right to use the patented cables of the complainant ; and he intimated that the complainant acquired by his patent no right to use his cables between Florida and Cuba. His Honor supported this inti- mation by saying that no patent confers upon its owner any right to make or use his invention in the house of another ; and he supported his decision by saying that the fact just mentioned does not confer upon another than the patentee any right to make or use the invention of the latter in the house of the former. 161. No United States patent right extends to the mere use of the patented invention on any foreign ship, while tem- porarily in a harbor of the United States for the purposes of commerce ; though such a right would be infringed by mak- ing or selling the patented article on board any foreign vessel while in either of our ports. 3 United States patent rights ex- tend to the decks of United States ships, even when those 1 Revised Statutes, Section 4884. 3 Brown v. Duchesne, 19 Howard 8 Colgate v. Ocean Telegraph Co. 196, 1856. 17 BJafch. 310, 1879. 112 LETTERS PATENT. [CHAP. VII. ships are on the high seas, as fully as they extend to the solid earth of the United States. ' 162. The regular duration of a United States patent for a process, machine, manufacture, or composition of matter, was fourteen years, under the statutes prior to that of 1861 ; but it was enacted in Section 16 of the Patent Act of March 2 of that year, that all patents thereafter granted should remain in force for seventeen years from the date of issue. 2 Section 22 of the Consolidated Patent Act of 1870 provided that every patent should grant to the patentee, his heirs or assigns, for the term of seventeen years, the exclusive right to make use and vend the invention covered thereby. 3 Section 4884 of the Revised Statutes makes the same provision, as that made on this point by the Act of 1870. The phrase " every pat- ent'' is not to be understood in its literal signification. It means every patent, the duration of which is not otherwise prescribed by statute. In the latter category, design patents fall. Such patents are grantable for fourteen years ; or for seven years ; or for three years and six months, as the appli- cant may in his application elect. 4 In the same category, also, fall patents for inventions for which their owners pre- viously obtained one or more foreign patents. United States patents of this class cannot be granted for more than seven- teen years, and they generally have to be limited to some shorter length of time. 163. " Every patent granted for an invention which has previously been patented in a foreign country, shall be so lim- ited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one hav- ing the shortest term, and in no case shall it be in force more than seventeen years." " Such is the present statute on this subject, and the corresponding provision of the Patent Act of 1870 was substantially the same.' These enactments apply 1 Gardiner v. Howe, 2 Clif. 464, Section 22, p. 201. 1865. Revised Statutes, Section 4931. 12 Statutes at Large, Ch. 88, Revised Statutes, Section 4887. Section 16, p. 249. 16 Statutes at Large, Ch. 230, 16 Statutes at Large, Ch. 230, Section 25, p. 201. CHAP. VII.] LETTERS PATENT. 113 only to cases wherein the foreign patent was taken out bj the United States patentee, or at least with his knowledge and consent. No foreign patent obtained by another, without that knowledge and that consent, after the inventor made his invention, and before the United States patent was granted, can operate to limit the duration of the latter. 1 "Whether these enactments apply to all cases where a foreign patent was granted before the granting of the United States patent ; or apply only to cases where a foreign patent was published before the granting of the United States patent, is a question of some difficulty, and one which is as yet unsettled. The weight of reason seems to be in favor of the first hypothesis. "Whether these enactments apply to cases where the United States patent was granted after the foreign patent, but upon an application filed before that event, is a question which was decided in the negative by the Commissioner of Patents ; 2 and in the affirmative by Judge NIXON. 3 The Commissioner was clearly wrong, and the judge was clearly right in the mat- ter. In cases to which these enactments apply, the United States patent will expire with the first term of the foreign patent. No extension of such foreign patent can have any effect upon the duration of the United States patent ; whether that exten- sion is a matter of grace, as in England, and was granted after the expiration of the first term, 4 or whether it is a matter of right, as in Canada, and was granted before the expiration of the first term. 5 The law set forth in this section applies to no patent which was originally granted prior to July 8, 1SYO ; and applies to no reissue of any patent which was originally granted before that date, even though the reissue itself was granted after that date.' 1 Kendrick v. Emmons, 2 Bann. Ard. 501, 1878. & Ard. 210, 1875. * Keissneru. Sharp, 16Blatch. 393, 4 Ex parts Mann, 17 Off. Gaz. 330, 1879. 1880. Badische Anilin and Soda Fabrik 3 Bate Eefrigerating Co. v. Gillett, v. Hamilton. Mfg. Co. 3 Bann. & Ard. 13 Fed. Hep. 553, 1882. 235, 1878.. 4 Henry v. Tool Co. 3 Bann. & 114: LETTERS PATENT. [CHAP. VII. It is not necessary that tlie United States patent shall be so limited on its face, as to appear to expire at the same time with the shortest foreign patent. Whether it is so limited or not, the courts will decline to enforce it after the expiration of the foreign patent. 1 In this way the statute is satisfied. In this way the United States patent is so limited as to expire at the same time with the foreign patent. Substantially this doc- trine was also held by the Supreme Court,* in construing an earlier statute on the same subject : a statute which it is now in order to explain. 164. Section 8 of the Patent Act of 1836, provided that nothing therein contained should be construed to deprive any original and true inventor of the right to a patent for his in- vention, by reason of his having previously taken out letters patent therefor in a foreign country, and the same having been published, at any time within six months next preceding the filing of his specification and drawings. 3 Section 6 of the Patent Act of 1839 provided that no person should be de- bared from receiving a patent for any invention, as provided in the Act of 1836, by reason of the same having been pat- ented in a foreign country more than six months prior to his application, provided, among other things, that every such patent should be limited to the term of fourteen years from the date or publication of such foreign letters patent. 4 The effect of these enactments was to allow an inventor to take out a patent in the United States, for an invention which he had previously patented in a foreign country, no matter how long previously that foreign patent was granted ; * but the duration of the United States patent was limited to the term of four- teen years from the date or publication of the foreign patent, unless the United States patent was applied for within six months after the foreign patent was taken out, and within six months after the foreign patent was published. This law ap- 1 New American File Co. v. Nich- Section 8, p. 121. olson File Co. 8 Fed. Eep. 816, 1881. 5 Statutes at Large, Ch. 88, Seo- * O'Keilly v. Morse, 15 Howard, tion 6, p. 354. <62, 1853. De Florez v. Eaynolds, 17 Blatch. * 5 Statutes at Large, Ch. 357, 444, 1880. CHAP. Vn.] LETTERS PATENT. 115 plied only to cases where the foreign patent was published be- fore the United States patent was applied for. ' It did not, therefore, affect any United States patent for an invention which was patented in a foreign country while the application for the United States patent was pending in the Patent Office. It was not necessary under the law stated in this section, any more than it is necessary under the law stated in the last, that a patent should be limited on its face, so as to appear to expire when it really ceased to be in force. Whether so limited or not, the courts would limit it to its legal life, when called upon to enforce it after the end of that life ; but its validity for the term of fourteen years from the date of the foreign patent, was unaffected by the fact that on its face the United States patent purported to run for fourteen years from its own date. 8 165. Section 16 of the Patent Act of March 2, 1861, provided that all patents thereafter granted should remain in. force for the term of seventeen years from the date of issue ; and Section 17 of the same act repealed all prior inconsistent acts and parts of acts. 3 It is an important and an unsettled question whether these provisions modified the law set forth in the last section ; and if so, to what extent. The question is important, because it applies to all United States patents which were granted between March 2, 1861, and July ,8, 1870, for inventions previously patented in a foreign country, with the knowledge and consent of the United States patentee. The question is unsettled because neither of the Circuit Courts which have considered it, had occasion to consider it in all its aspects, and because as far as they did consider it, they did not agree. 166. There are three opinions relevant to the question stated in the last section. The first opinion is that the statute of 1861 did not repeal nor modify the former law on this subject. Those who hold this view, support it by arguing that when properly construed, 1 French v. Rogers, 1 Fisher, 136. 62, 1853. 1851. 312 Statutes at Large, Ch. 88, s O'Reilly v. Morse, 15 Howard, Sections 16, 17, p. 249. 116 LETTERS PATENT. [CHAP. VII. the Act of 1861 is entirely consistent with that of 1839. They say that the phrase " all patents" in the Act of 1861, cannot be construed literally ; for if it could, it would include reissue patents, and patents for designs. That being the case, they say that the statute should be construed to mean : All pat- ents hereafter granted, the duration of which is not specially prescribed by statute, shall remain in force for the term of seventeen years from the date of issue. Those who hold this view support it still further by an argument drawn from the policy of the law. They say that the reason of the law of 1839 was the same as that which dictated the law of 1870 : namely an opinion that inventions ought not to be the sub- jects of monopolies in the United States, after they become free to other nations. They suppose that in 1839 Congress took it for granted, that whenever other foreign countries should adopt a patent system, they would follow the example of England and of the United States, and make the duration of their patents fourteen years. As long as that continued to be the case, the provision of the Act of 1839, that a United States patent, for an invention previously patented in a foreign country, should be limited to the term of fourteen years from the date of the foreign patent, had the same effect that would have followed from the provision of 1870, had the latter been the law at that time. But when foreign countries, like Aus- tria and Prussia, provided themselves with patent laws, they provided for shorter terms than fourteen years, and ac- cordingly the 'United States in 1870 altered its law on the subject, so as to make United States patents for inventions pre- viously patented in foreign countries to expire at the same time with the shortest foreign patent. In the light of these circumstances, those who hold this first opinion believe that a statute of such long standing as that of 183&, and founded on such a well-known point of public policy, ought not to be held to be repealed by an argument, which, if valid, would not only have that effect, but would also have authorized or compelled the granting of seventeen -year patents for designs. They be- lieve also, that no convincing argument can be made in favor of the hypothesis of modification, any more than in favor of CHAP. VII.] LETTERS PATENT. 117 the hypothesis of repeal of the provision in the Act of 1839, by the passage of the Act of 1861. 167. The second opinion is, that the statute of 1861 mod- ified that of 1839 precisely as it would have done, had it ex- pressly substituted the word " seventeen" for the word "fourteen" in the earlier statute; thus making it read: " every such patent shall be limited to the term of seventeen years from the date or publication of such letters patent." This was the opinion of Judge NATHANIEL SHIPMAN in 1876.' In support of it his Honor said : " In my opinion, the 16th and 17th sections of the Act of March 2d, 1861, (12 U. S. Stat. at La/rge, 249,) 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 seven- teen years, without extension. This being the intent of the Legislature, the proviso of the 6th section of the Act of March 3d, 1839, (5 Id., 354,) 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 foreign letters patent, was, by the operation of the 16th section 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 proviso was not based upon the idea that American patents should expire at the same time with the foreign patent. It is true, that, when an English patent had been taken out, such would be the practical result, but it would not be the re- sult when a patent had been granted by the government of a foreign nation whose laws provided a term of five, ten, or fif- teen years. The intent of the 6th section of the Act of 1839 was, that, in case a foreign patent had been issued, while the American patent was to be issued for the term of fourteen years, (which had been previously provided as the duration of the life of all American patents, subject to extension,) the American patent should be considered, for the purposes of the 1 Western v. White, 13 Blatch. 364, 1876. 118 LETTERS PATENT. [CHAP. VH. duration of the term, as antedated to the commencement of the term of the foreign patent. The act of 1861 made no altera- tion in this general system of legislation, but, having altered the term of American patents to seventeen years, and having provided for a repeal of all laws inconsistent therewith, the Cth section of the act of 1839 was changed accordingly, by force of the new provision of the statute of 1861. The act of , July 8th, 1870, (16 U. S. Stat. at Large, 198,) introduced a new principle, and provided that the American patent should expire at the same time with the foreign patent, but should not exceed a term of seventeen years. The plaintiff's patent will not, therefore, expire until October 22d, 1876." 168. The third opinion is that the statute of 1861 repealed the whole prior law on this subject, and provided that United States patents should run seventeen years from their respec- tive dates, whether the invention covered thereby had pre- viously been patented in a foreign country or not. This was the opinion of Justice CLIFFORD in 1878. ' His Honor, how- ever, omitted to support his opinion by reasoning ; and neither of the two precedents he cited to support it, appears, when closely examined, to bear upon the precise point. 169. Justice BLATCHFORD reviewed the question which is discussed in the last four sections, in a decision which he ren- dered in 1880." With the highest regard expressed for the judgment of Justice CLIFFORD, he, with Judge WHEELER'S concurrence, decided that the third opinion was not correct. Their Honors did not decide whether the true view is the first opinion, or the second opinion heretofore explained. Accord- ing to either of those theories, the patent at bar had expired, and in either event, therefore, the injunction which had been granted in ignorance of the foreign patent, had to be vacated, and was accordingly discharged. The Court, however, clearly indicated a leaning in favor of the second opinion, as against the first, and accordingly Judge WHEELER in a later case s 1 Gofif v. Stafford, 3 Bann. Potter, 3 Fisher, 55, 8 Saint Louis Stamping Co. v. 1859. Quinby, 4 Bann. & Ard. 195, 1879. * Tilgbman v. Proctor, 102 U. S. 8 Singer v. Walmsley, 1 Fisber, 728, 1880. CHAP. VII.] LETTERS PATENT. 125 beneficially without it ; ' but the omission of anything abso- lutely material to the utility of the invention described, is a fatal defect in a description ; " unless that omission would naturally be supplied by any person skilled in the art, when making the invention if it be a thing, or when using it if it be a process. Accordingly it has been held, that where one element of a new combination covered by a patent, must have a certain form, in order to operate in that combination, and where another form of that element is known to persons skilled in the art, a description is insufficient which merely states that such old element is a part of the combination, with- out saying or showing which of its known forms is applicable to the case. 3 On the other hand, no excess of description is injurious to the validity of a patent, unless the redundant mat- ter was introduced with fraudulent intention. 4 176. The claim or claims of a specification are necessarily inserted in order to conform to the statutory requirement, that the patentee shall particularly point out and distinctly claim the part, improvement, or combination, which he claims as his invention. 6 A claim covers and secures a process, a machine, a manufacture, or a composition of matter, and never the func- tion or result of either. 8 A claim may cover the entire proc- ess, machine, manufacture, or composition of matter, which is set forth in the description, or it may cover such parts, or such sub-processes, or such sub-combinations as are new and useful inventions ; and the specification may contain a claim for the whole, and other claims for separate parts, and still other claims for separate sub-processes or sub-combinations. 7 But in order to be sustained, each claim must be able to inde- pendently withstand the tests of invention, of novelty, and 1 Sewall v. Jones, 91 U. S. 185, 6 Corning v. Burden, 15 Howard, 1875. 252, 1853 ; O'Keilly v. Morse, 15 4 Carr v. Eice, 1 Fisher, 204, 1856. Howard, 62, 1853 ; Carver v. Hyde, 3 Schneider v. Thill, 5 Bann. & 16 Peters, 513, 1842 ; Le Hoy v. Ard. 565, 1880. Tatham, 14 Howard, 156, 1852. 4 Sewell v. Jones, 91 U. S. 186, ' Kailroad Co. v. Dubois, 12 Wal- 1875. lace, 47, 1870. 6 Revised Statutes, Section 4888. 126 LETTERS PATENT. [CHAP. VII. of utility, which are stated in the second, third, and fourth chapters of this book respectively. All claims are re- quired to be specific, so that the public may know what they are prohibited from doing during the existence of the patent, and what they are to have at the end of the term as a consid- eration for the grant. 1 The necessary degree of particularity in claims may be reached in various modes. "Where the in- vention is an entire machine, the claim is sufficient if it is clearly co-extensive with the machine ; and where the inven- tion is a part of a machine or manufacture, that part must be clearly indicated in the claim which covers it." Claims for combinations of a plurality of the described devices, but less than all of them, should specify those devices unmistakably, and should clearly indicate that it is the specified combination that is claimed. But though this degree of obvious certainty is highly desirable in a combination claim, it is not absolutely necessary to the validity of such an one ; for a claim may de- clare that it covers so much of the described mechanism as effects a particular specified result, without specifying those parts themselves. In such a case it is a question of fact to be determined in court, if necessary, which parts those are which effect that result and are therefore covered by the claim. 1 So also, two or more claims in substance, may sometimes be combined in one claim in form. This is accomplished by in- serting in the claim the words " with or without" before the name or other designation of one or more of the enumerated parts of the process, machine, combination, manufacture or composition of matter, covered by that claim. 4 The claim of the Charles Goodyear rubber patent, had this characteristic. It was a claim for vulcanized India rubber, whether with or without other ingredients, chemically altered by the applica- tion of heat, substantially as described. 6 177. Letters patent may be valid as to one or more 1 Brooks v. Fiske, 15 Howard, 212, 1852. 1853. * Tuck v. Bramhill, 6 Blatch. 95, * Seymour v. Osborne, 11 Wallace, 1868. 616, 1870. B Rubber Co. v. Goodyear, 9 Wai- 3 SUsby v. Foote, 14 Howard, 218, lace, 795, 1869. CHAP. VII.] LETTERS PATENT. 127 claims, while being invalid as to one or more other claims in the same specification. 1 But letters patent which contain a needless multiplication of nebulous claims, calculated to mis- lead the public, are void for that reason, if for no other.* This word "calculated" is the word used by the justice who announced the opinion of the Supreme Court upon the point. It is itself somewhat nebulous, for it is ques- tionable whether it means apt or means intended. Judge "W. D. SHIPMAN was quite explicit, when deciding a similar question. He held that a patent is not void merely be- cause it contains a plurality of claims, each of which covers the same thing, and covers nothing else, where there is no evidence that the double claim was made with intention to mislead. 8 In the light of this decision, the word "calcu- lated" in the Supreme Court decision, is seen to signify in- tended, and the Supreme Court decision is therefore to be read with that explanation. If all the claims of a particular patent are void, either for want of particularity, or for want of invention, novelty or utility, or for any other reason or reasons ; that patent is also void, even though one or more valid claims might have been made and allowed on the basis of the descriptive part of the specification. 4 178. The statutory requirements relevant to particularity in the descriptions and claims of letters patent, are conditions precedent to the authority of the Commissioner of Patents to issue such documents ; 5 and if such a document is issued, the description or claim in which, does not conform to these requirements, then that document is void.' This point of law does not depend on the intention 01 the in- ventor, but is a legal inference from his failure to give 1 Russell v. Place, 94 U. S. 606, 215, 1880. 1876. Seymour v. Osborne, 11 Wallace, a Carlton v. Bokee, 17 Wallace, 516, 1870. 463,1873. O'Reilly v. Morse, 15 Howard, 3 Tompkins v. Gage, 5 Blatch. 270, 62, 1853 ; Ames v. Howard, 1 Sum- 1861. ner, 482, 1833. 4 Wisner u. Grant, 5 Bann. & Ard. 128 LETTERS PATENT. [CHAP. VII. to his description and claims the statutory particularity.' It is a question of jurisdiction in the Commissioner of Pat- ents ; not a question of fraudulent intent in the delinquent patentee. The Commissioner is authorized to issue letters patent only on adequate specifications. If he issues them on inadequate specifications, their invalidity cannot be removed by showing that the inadequacy arose from ignorance and not from fraud. This point of law is not shaken by the fact that Section 4920 of the Revised Statutes, in providing for special defences to patent suits, under the general issue in pleading, provides that among such defences, the defendant may prove " that for the purpose of deceiving the public the description filed by the patentee in the Patent Office, was made to con- tain less than the whole truth relative to the invention or dis- covery, or more than is necessary to produce the desired effect." There are several grounds for this opinion of the text writer. First : An omission to state the whole truth rela- tive to an invention, is not necessarily the same thing as an in- sufficient description of that invention. A specification might have one or more of several faults belonging to the first cate- gory, and be free from objection on the latter score. One of these would be an omission to state some double use of which the invention is capable. Such an omission, if made in igno- rance of that double use, ought not to in validate the patent, but if made with a fraudulent intention to keep that double use forever secret, it ought to have that effect. The defence in Section 4920 is aimed at such cases, and not at cases of in- sufficiency of specification. Second : The defences provided for in Section 4920 are not all the defences that may be inter- posed in infringement cases. They are merely the defences that may be interposed under the general issue. The defence of insufficient specification, as well as any other legal defence, may be interposed by a special plea." 179. It is a question of fact for a jury in an action at law, or for a chancellor in an action in equity, to determine whether 1 Grant v. Raymond, 6 Peters, 218, 9 Eeckendorfer v. Faber, 92 U. S. 1832. 347, 1875. CHAP. Vn.] LETTERS PATENT. 129 the specification, including the claim, of a patent, conforms to the statutory requirements relevant to particularity. 1 That question is, in both tribunals, a question of evidence and not a question of construction. 180. Two or more inventions, if they relate to the same subject, or are in their nature and operation connected together, may be covered by a corresponding number of claims in a sin- gle letters patent. * On the other hand, separate letters pat- ent may be granted for different parts of the same machine.* In such cases it is proper to describe the whole machine in each of the specifications, and to picture the whole machine in each set of drawings, thus causing the separate letters patent to differ from each other only in their claims." A plurality of patents cannot, however, be granted for different uses of the same invention. 5 Indeed all the uses of an invention are covered and secured by a single letters patent for that inven- tion.' 181. To construe letters patent, is to determine precisely what inventions they cover and secure. Nothing described in letters patent, is secured thereby, unless it is covered by a claim. 7 The construction of letters patent depends therefore upon the construction of their respective claims ; and the established rules by means of which claims are properly con- strued may constitute the next subject of discussion. 182. The phrase "substantially as described," or it& equivalent, when such a phrase occurs in a claim, throws the investigator back to the description for means of construc- tion ; " and ,that phrase is always implied in claims wherein 1 Battin v. Taggert, 17 Howard, 5 McComb v. Brodie, 1 Woods, 74, 1854. 153, 1871. 8 Hogg v. Emerson, 6 Howard, 6 Roberts v. Ryer, 91 U. S. 157, 483, 1848 ; McComb v. Brodie, 1 1875. Woods, 153, 1871 ; Stevens v. Pritch- ' M'Millin v. Rees, 5 Bann & Ard. ard, 2 Bann. & Ard. 390, 1876. 269, 1880 ; Delaware Coal & Ice Co. 3 Graham v. McCormick, 11 Fed. v. Packer, 5 Bann. & Ard. 296, 1880. Rep. 859, 1880 ; Graham v. Mfg. Co., 8 Seymour v. Osborne, 11 Wallace, 11 Fed. Rep. 138, 1880. 516, 1870 ; Corn-Planter Patent, 23 4 M'Millin v. Rees, 5 Bann. & Ard. Wallace, 181, 1874. 269, 1880. 130 LETTERS PATENT. [CHAP. VII. it is not expressed. 1 This implication follows from the un- doubted rule, that while descriptions are considered, in this connection, only for the purpose of construing claims,' a claim should always be construed in the light of the descrip- tion. 1 The drawings attached to letters patent, may also be referred to for explanation of anything which the description leaves obscure. 4 But neither drawings nor descriptions can enlarge claims ; 6 though claims may be narrowed by limita- tions or qualifications contained in the description. 8 183. Claims which are functional in form ; that is to say claims which literally purport to cover a result rather than a process or a thing, are properly construed to cover only the process or the thing which produces that result, for otherwise such claims would be void. 7 184. The state of the art, to which an invention belongs, at the time that invention was made, must be considered in construing any claim for that invention. 8 The leading cases on this subject are McCormick v. Talcott ;' and Railway Co. V. Sayles. 10 The doctrine of the first of these cases is as follows. The original inventor of a machine, will have a right to treat as in- fringers, all who make machines operating on the same prin- ciple, and performing the same functions, by analogous means, or equivalent combinations ; even though the infring- ing machine be an improvement on the original, and patenta- 1 Matthews v. Schoneberger, 4 Fed. 7 Fuller v. Tentzer, 94 U. S. 288, Rep. 635, 1880 ; Westinghouse v. Air- 1876 ; Parham v. Buttonhole Co. Brake Co. 2 Bann. & Ard. 57, 1875. 4 Fisher, 468, 1871 ; Hitchcock v. 8 Pitts v. Wemple, 1 Bissell, 87, Tremaine, 4 Fisher, 508, 1871 ; Goes 1855. v , Collins Co. 9 Fed. Rep. 905, 1882 ; 3 Smith v. Dental Vulcanite Co. Henderson v. Stove Co. 2 Bann. & 93 U. S. 493, 1876 ; Lull v. Clark, Ard. 608, 1877 ; Palmer v. Gatling 13 Fed. Rep. 456, 1882. Gun Co. 8 Fed. Rep. 513, 1881. 4 Hogg v. Emerson, 11 Howard, 8 Carlton v. Bokee, 17 Wallace, 587, 1850. 463, 1873 ; Washing-Machine Co. v. * Railroad Co. v. Mellon, 104 U. S. Tool Co. 20 Wallace, 342, 1873. 112, 1881. McCormick v. Talcott, 20 How- New York Belting and Packing ard, 402, 1857. Co. v. Sibley, 15 Fed. Rep. 389, "> Railway Co. v. Sayles, 97 U. S. 1883. 554, 1878. CHAP. VII.] LETTERS PATENT. 131 ble as such. But if the invention claimed, be itself but an improvement on a known machine, by a mere change of form or combination of parts, the patentee cannot treat another as an inf ringer, who has improved the original machine, by use of a different form or combination, performing the same func- tions. The inventor of the first improvement cannot invoke the doctrine of equivalents to suppress any other improvement which is not a mere colorable invasion of the first. The doctrine of the Sayles case is as follows. If one in- ventor, in a particular art, precedes all the rest, and strikes out something which underlies all that they produce, he sub- jects them to tribute. But if the advance toward the thing desired, is gradual so that no one can claim the complete whole, then each inventor is entitled to the specific form of device which he produced, and every other inventor is entitled to his own specific form, so long as it differs from those of his com- petitors and does not include theirs. The meaning of these two cases seems to be that every in- ventor is entitled to claim whatever he was the first to invent. If A. B. is the first to invent a machine to perform a particu- lar work, and if his machine is substantially incorporated into subsequent machines which do that work, then A. B. is entitled to such a construction of his patent as will cover those later machines ; but if C. D. is a mere improver on A. B.'s machine, C. D. is not entitled to such a construction of his patent, as will cover the machines of still later inventors, who have improved on A. B.'s machine in a different manner. It follows from these doctrines that C. D.'s patent must be con- strued in the light of A. B.'s machine, and indeed of every other similar and older structure ; which is the same thing as saying that every patent must be construed in the light of the state of the art, at the time the invention it covers was pro- duced. 185. " 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 exclude what is in it, or to interpo- late anything which it does not contain. But liberality, rather than strictness, should prevail where the fate of the patent is 132 LETTERS PATENT. [CHAP. VII. involved, and the question to be decided is whether the in- ventor shall hold or lose the fruits of his genius and his labors." ' " Patents for inventions are to receive a liberal construction, and under the fair application of the rule, ut res inagis valeat quam pereat, are, if practicable, to be so inter- preted as to uphold and not to destroy the right of the in- ventor."* "While it is undoubtedly true, that a patentee may so restrict his claim as to cover less than what he in- vented, or may limit it to one particular form of a machine, excluding all other forms, though they also embody his inven- tion, yet such an interpretation should not be put upon his claim if it can fairly be construed otherwise. ' ' 3 These are the declarations of the Supreme Court relevant to the proper liberality to be observed in construing patents. That liberality as often shows itself in a narrow construction as in a broad one ; for a narrow construction may be as neces- sary to establish the novelty of a patent, as a broad construc- tion is to lay the foundation for proof of its infringement. Therefore when it becomes necessary to construe a claim nar- rowly, in order that its novelty may not be negatived by the prior art, courts will give such a narrow construction, if they can do so consistently with the language of the claim and of the description. 4 186. " It is well known that the terms of the claim in let- ters patent are carefully scrutinized in the Patent Office. Over this part of the specification the chief contest generally arises. It defines what the office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to. The courts, therefore, should be careful not to enlarge, by construction, the claim which the Patent Office has admitted, and which the patentee has acquiesced in, beyond the fair interpretation of its terms." * "As patents are pro- 1 Rubber Co. v. Goodyear, 9 Wai- Klein v. Russell, 19 Wallace, lace, 788, 1869. 433, 1873 ; Jones v. Barker, 11 Fed. * Tnrrill v. Railroad Co. 1 Wallace, Rep. 600, 1882. 491. 1863. Burns v. Meyer, 100 U. S. 672, 8 Winans v. Denmead, 15 Howard, 1879. 330, 1853. CHAP. VII.] LETTERS PATENT. 138 cured escparte, the public is not bound by them, but the pat- entees are. And the latter cannot show that their invention is broader than the terms of their claim ; or, if broader, they must be held to have surrendered the surplus to the public." 1 These are the declarations of the Supreme Court relevant to the proper strictness to be observed in construing patents. Therefore, when a claim clearly covers a combination of cer- tain elements, it cannot, by construction, be so altered as to cover fewer elements, and thus be rendered more likely to be infringed. 3 So also, a claim for a process, substantially as described, cannot be construed to cover an incidental process set forth in the description, but merely recommended therein instead of being required or being stated to be essential to the principal process of the patent. 3 187. Letters patent may be construed in the light of the contemporaneous construction of the inventor ; and to this end recourse may be had to the files of the application papers, to see what changes were made in the description and claims while the application was pending in the Patent Office. 4 188. The laws which were in force when any particular patent was granted, are the laws according to which it must be construed ; 6 and a special statute relevant to any particular patent, is engrafted on the general patent statutes, and must be construed harmoniously with them." 189. Questions of construction are questions of law for the judge, not questions of fact for the jury. 7 As it cannot be expected, however, that judges will always possess the req- uisite knowledge of the meaning of the terms of art or science used in letters patent, it often becomes necessary 1 Keystone Bridge Co. v. Iron Co. 5 McClurg v. Kingsland, 1 Howard, 95 U. S. 278, 1877. 202, 1843. 2 Le Fever v. Remington, 13 Fed. 8 Evans v. Eaton, 3 Wheaton, 454, Eep. 86, 1882. 1818 ; Bloomer v. McQuewan, 14 8 Sewell v. Jones, 91 U. S. 185, Howard, 539, 1852. 1875. ' Winans v. Denmead, 15 Howard, 4 Trader u. Messmore, 1 Ban. & 330, 1853. Ard. 639, 1875. 134: LETTERS PATENT. [CHAP. VII. that they should avail themselves of the light furnished by ex- perts relevant to the significance of such words and phrases. 1 The judges are not however obliged to blindly follow such testimony. They may disregard it, if it appears to them to be unreasonable. 11 While the testimony of experts, relevant to the meaning of particular words or phrases in letters patent, is to this extent admissible ; such testimony is wholly inadmis- sible relevant to the construction of the letters patent as a whole.* 190. In the absence of contrary evidence, the invention covered by a particular letters patent, is presumed to be iden- tical with that covered by the application on which those let- ters patent were granted. 4 191. All persons are bound to take notice of the contents of all letters patent of the United States, because those letters patent are matters of public record. 6 1 Loom Co. v. Higgins, 105 U. S. 252, 1853. 580. 1881. < Loom Co. v. Higgins, 105 U. S. * Winans v. Railroad Co. 21 How- 580, 1881. ard, 88, 1858. * Boyden v. Burke, 14 Howard, 3 Corning v. Burden, 15 Howard, 575, 1852. CHAPTEK VIII. DISCLAIMERS. 192. Statutory authorization of dis- claimers. 193. Statutory prescriptions, rele- vant to disclaimers. 194. Errors which justify disclaim- ers. 195. Mistakes of fact, relevant to novelty. 196. Mistakes of law, relevant to in- vention. 197. Claims void for want of utility. 198. Combination claims. 199. Compound claims. 200. Immaterial claims. 201. Keissue claims. 202. Fraudulent or deceptive inten- tion. 203. Effect of unreasonable delay to file a disclaimer. 204. Beginning of unreasonable delay to file a disclaimer. 205. Costs, where a necessary dis- claimer has not been filed. 206. Extent of disclaimant' s interest. 207. Construction of letters patent after a disclaimer. 208. Disclaimers filed pending lit- igation. 209. Disclaimers demanded by ju- dicial decisions. 192. THE statutory provisions relevant to disclaimers orig- inated in 1837, and have never been substantially changed. Sections 7 and 9 of the Patent Act of that year, 1 embodied those provisions ; and those sections continued in force till July 8, 1870, when they were subtantially re-enacted as Sec- tions 54 and 60 of the Consolidated Patent Act of that date.* In 1874, the latter sections were, in their turn, re-enacted, without any material change, as Sections 4917 and 4922 of the Revised Statutes. It would have been better statute writ- ing, if those two sections had always been blended together into one clear and comprehensive paragraph. Referring to the same subject, and standing, as they always have, in the same statute, they must undoubtedly be construed together ; 1 5 Statutes at Large, Ch. 45, Sec- tions 7 and 9, p. 193. 2 16 Statutes at Large, Ch. 230, Sections 54 and 60, p. 206 ; Taylor v. Archer, 8 Blatch. 318, 1871. 136 DISCLAIMERS. [CHAP. VIII. and the law they embody must be set forth, by extracting from both sections, all the material meaning of both, and by incor- porating that meaning, together with the case law of the sub- ject, into one systematic explanation. Let that therefore be the present attempt. 193. Whenever, through inadvertence, accident or mis- take, and without any fraudulent or deceptive intention, a patentee has, in his specification, claimed materially more than that of which he was the first inventor, his patent shall be valid for whatever is justly his own ; and every such patentee, his executors, administrators or 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 such part, if it is a material and substantial part of the thing patented, and is def- initely distinguishable from the parts claimed without right. But in every such case, in which a judgment or decree shall be rendered for the plaintiff, no costs shall be recovered, unless the proper disclaimer was entered in the Patent Office, before the commencement of the suit. But no patentee shall be entitled to maintain any such suit, if he has unreasonably neglected or delayed to enter a disclaimer. And any such patentee, his heirs or assigns, whether of the whole or of any sectional interest therein, may on payment of the fee required by law, make disclaimer of such parts of the subject-matter of the patent, as he shall not choose to longer claim, stating therein the extent of his interest in such patent. Such dis- claimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office, and shall thereafter be con- sidered 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 effect any action pending at the time of its being filed, except BO far as may relate to the question of unreasonable neglect or delay in filing it. 1 194. The primary fact which brings the law stated in the last section into play, is the claiming by a patentee of J Revised Statutes, Sections 4917 and 4922 blended together. CHAP. VIII.] DISCLAIMERS. 137 materially more than that of which he was the first inventor. Such errors may spring from inadvertence. That is to say, they may spring from failure, on the part of the writer of the claims, to exercise proper care in penning them. So also, they may arise from accident : from chances against which even dil- igent care cannot always guard. But mistake is the most common source of such errors ; and such errors may arise from mistake of fact or from mistake of law. 195. Mistakes of fact, relevant to how much of a de- scribed process, machine or manufacture was first invented by its patentee, frequently follow from lack of full information touching what was previously invented by others in the same department of the useful arts. Litigation may alone disclose the fact that the patentee's claims are too numerous or too broad to be consistent with novelty. Whenever this occurs, it is clear that the patentee ought no longer to appear to hold an exclusive right to anything which he was not the first to in- vent. To this end, the statute provides that he must disclaim that part, within a reasonable time, or, in default thereof, must suffer the statutory consequences. On the other hand it is equally clear, that if the patentee is willing to eliminate from his claims, everything which later information shows had been invented before him, he ought to be allowed to retain his exclusive right to the residue. To this end, the statute provides, that if within a reasonable time, he disclaims what was an- other's, he shall be enabled to enforce his patent as far as it covers what was his own invention. 196. A mistake of law, which consists in claiming some- thing not patentable, may also be remedied by disclaimer. 1 The law which requires and permits a patentee to disclaim, is not penal but remedial. It is intended for the protection of the patentee, as well as for the protection of the public. The evil to be remedied is the same, where a patentee has claimed more than he ought, whether that result sprang from the fact that another invented it before him, or sprang from the fact that what he produced was not an invention at all. For ' O'Keilly u. Morse, 15 Howard, 120, 1853. 138 DISCLAIMERS. [CHAP. VHI. this reason, the Supreme Court held that the eighth claim of Morse might be disclaimed, after having been held void for want of patentability, with the same effect as though it had been held void for want of novelty. The same reason would also permit a patentee to disclaim any claim which is void for want of invention. Indeed the statute expressly applies to such a case, for no man can be the first inventor of anything which is not an invention. He may be its first discoverer, if it is a law of nature, or its first constructor, if it is a product of mere mechanical skill, but its first inventor he cannot be. 197. There appears to be no warrant in the statute, for disclaiming any claim which is void for want of utility, and for no other cause. An inventor of a new thing may gener- ally ascertain its character in point of utility before applying for a patent. If he can do so, he ought to do so, and thus shield the public from the waste of time involved in examin- ing and judging useless contrivances. Where a patent has but one claim, and where the matter covered by that claim is use- less, no disclaimer could make that patent valid. Where a part only of the claims of a patent are void for want of utility, and for no other cause, the void claims are not injuri- ous to the valid ones, and therefore no disclaimer is needed in any such case. Where a claim purports to cover a thing con- structed in either of several ways ; and where that thing is useless if constructed in one of those ways, and useful if con- structed in another, the claim cannot be limited to the useful construction, by means of any disclaimer ; for it is not the office of a disclaimer to reform or to alter the description or claim of an invention. 1 Its function is to eliminate from letters patent all claims for inventions which were not new with the pat- entee, and all claims for things which were not inventions with him. 198. The right to file disclaimers is expressly limited to cases where the actual invention of the patentee is a material and substantial part of the thing patented. 4 Parts of combi- 1 Hailes v. Albany Stove Co. 16 ! Revised Statutes, Sections 4917 Fed. Rep. 242, 1883. White v. Mfg. and 4922. Co. 24 Off. Gaz. 205, 1883. CHAP. VIII.] DISCLAIMERS. 139 nations do not come within this category, for a combination is an entirety, and if one of the elements is given np, the thing claimed disappears. The disclaimer provisions cannot be made to modify and thereby save combination claims, for unless the combination is maintained the whole of the invention fails. 1 199. The statutes also provide, that in order to save a pat- ent by a disclaimer, the part retained must be definitely dis- tinguishable from the part eliminated. It does not follow, however, that each claim of a patent must be wholly dis- claimed, or wholly retained. On the contrary, there are cases where two or more inventions are covered by one claim ; and in such cases, a disclaimer may be made to expunge one of those inventions from that claim, without disturbing the others.* In the first of the cases just cited, the claim was : " The forming of packing for pistons or stuffing boxes of steam engines, and for like purposes, out of saturated canvas, so cut 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 elas- tic material, or without, as herein set forth. ' ' Litigation showed that such a thing, without a core, was old, and the patentee therefore entered a disclaimer to that part of the claim which covered the packing without the core. Justice BLATCHFORD held that disclaimer to be proper, and to be effectual. In the second case cited, the claim was, ' ' The use and appli- cation of glue, or glue composition, in the tubing, substan- tially as described, for the purpose of making the flexible tub- ing gas tight, whether of cloth or rubber, or other gum." During the pendency of the suit, and after considerable testi- mony had been taken, a disclaimer was entered to that part of the claim of the patent which claimed as an improvement in flexible tubing for illuminating gas, the use and application of glue ; thereby limiting the claim to the use and application of 1 Vance v. Campbell, 1 Black. 429, 1868 ; Taylor v. Archer, 8 Blatoh. 1861. 318, 1871. Tuck v. Bramhill, G Blatch. 95, 140 DISCLAIMERS. [CHAP. glue composition in the tubing, substantially as described. This disclaimer was also upheld by the same distinguished chancellor who upheld the disclaimer in the other case. 200. There is one difference between the two disclaimer sections, of the Revised Statutes, which it is now requisite to mention. Section 4917 contemplates disclaimers as being proper whenever a patentee has claimed more than that of which he was the first inventor ; while Section 4922 attends only to cases wherein the excess is a material or substantial part of the thing patented. This qualification should be in- serted in the two sections, as construed together, because Sec- tion 4922 is the only one that prescribes any evil result from a failure to disclaim. Neither section visits any infliction on any patentee, for omitting to disclaim anything which is an immaterial part of the thing patented. If, therefore, a pat- entee omits to disclaim such a part, when he discovers it to have been known before his invention thereof, or learns that it is not an invention at all. he thereby loses no right, and incurs no inconvenience. ! To file a disclaimer, in such a case, is an act which is at once harmless and unnecessary. 201. Reissue patents, as well as original patents, are entitled to the benefits of the law relevant to disclaimers ; and that too, even where the matter disclaimed was not claimed in the original, but only in a reissue granted upon its surrender.* Where an original patent was surrendered, and then reissued in several divisions ; that is to say, where several reissue pat- ents were granted for separate inventions described in an orig- inal patent, a suit based upon one of those divisions will be unaffected by th* fact that a claim in another division, is in- valid for want of novelty, or for want of invention. The statute relevant to disclaimers has no application to such cases.' 202. Fraudulent or deceptive intention, if it existed on 1 Hall v. Wiles, 2 Blatch. 199, Blatch. 69, 1879 ; Tyler v. Galloway, 1851 ; Peek v. Frame, 5 Fisher, 212, 12 Fed. Rep. 567, 1882. 1871. 8 Elastic Fabrics Co. v. Smith, 100 O'Reilly v. Morse, 15 Howard, U. S. Ill, 1879. 62, 1853 ; Schillings v. Gunther, 17 CHAP. VIII.] DISCLAIMERS. 141 the part of a patentee, when claiming materially more than that of which he was the first inventor, or when claiming that which was not patentable, will rightly prevent him from re- ceiving any benefit from a disclaimer. This statutory pro- vision is in harmony with the principles of equity ; a system which always declines to extract persons from trouble which arose from their own moral turpitude. 203. The statement in Section 4917, that under the cir- cumstances therein mentioned, a patentee's patent shall be valid as to all that part of the invention which is truly and justly his own, is to be construed in connection with the pro- vision in Section 4922, that the patentee shall not be entitled to recover in any suit, if he unreasonably neglects or delays to enter a disclaimer. "When so construed, the two sections enact that where a patentee claims materially more than that which he was the first to invent, his patent is void, unless he has preserved the right to disclaim the surplus, and that he may fail to preserve that right, by unreasonable neglect or delay to enter a disclaimer in the Patent Office. 204. Unreasonable neglect or delay to file a necessary dis- claimer, begins when knowledge is brought home to the pat- entee, that the inventor upon whose account the patent was granted, was not the first inventor of a particular thing claimed in the patent and material to the subject of the pat- ent as a whole. 1 If, however, there is reasonable ground for difference of opinion relevant to the question whether the prior patent, or the prior process, or the prior thing, so brought home to the knowledge of the patentee, really nega- tives the novelty of anything claimed by him ; then unreason- able delay to file a disclaimer will not begin until that question is finally settled by the courts." The question whether the delay to enter a disclaimer, in a particular case, was or was not unreasonable, is a mixed question of law and fact, to be decided by the jury in accordance with proper instructions 1 Singer v. Walmsley, 1 Fisher, s Seymour v. McCormick, 19 How- 558, 1860; Parker v. Stiles, 5 McLean, ard, 106, 1856 ; Potter v. Whitney, 44, 1849 ; O'Reilly v. Morse, 15 How- 1 Lowell, 87, 1866. ard, 121, 1853. 142 DISCLAIMERS. [CHAP. VIII. from the court. 1 In the case of Seymour v. McCormick,* the Supreme Court, when speaking of the question of the necessity for a disclaimer in that case, and of the question of unreasonable delay in entering one, said : " Under the circum- stances, the question is one of law." The peculiar colloca- tion of the paragraph, has caused some courts, 8 to suppose that the question thus characterized, was the question of delay ; but really it must have been the question of necessity. The latter depended wholly upon the construction of the patent, and was therefore a question of law. Whether or not a par- ticular instance of delay was unreasonable, must largely de- pend upon the circumstances which surrounded the person chargeable therewith. "What those circumstances were is a question of fact. Whether they constituted an excuse for the delay, is a question of law. Whether or not a particular in- stance of delay to enter a necessary disclaimer, was unreason- able, is therefore a mixed question of law and of fact. 205. No costs can be recovered in any infringement suit, the final decision of which shows a necessity for a disclaimer, unless such a disclaimer was entered in the Patent Office be- fore the commencement of the suit. 4 This rule applies even to cases where the delay to enter the disclaimer was not un- reasonable. 6 But a verdict on all the claims of a patent, entitles the plaintiff to costs, even if, after that verdict, he tiles a disclaimer to one or more of the claims of that patent." Judge LOWELL has said that where a plaintiff sues on a part of the claims of his patent only, the defendant will not be permitted to raise any issue relevant to the validity of any other claim, with intent to show a necessity for a disclaimer, 1 Brooks v. Jenkins, 3 McLean, * Revised Statutes, Section 4922 ; 449, 1844 ; Washburn v. Gould, 3 Eeed v. Cutter, 1 Story, 591, 1841 ; Story 122, 1844 ; Burden v. Corning, Burdett v. Estey, 5 Bann. & Ard. 2 Fisher, 477, 1864. 309, 1880. Proctor v. Brill, 16 Fed. 8 Seymour v. McCormick. 19 How- Eep. 791, 1883. aid, 106, 1856. * O'Reilly v. Morse, 15 Howard, 4 Singer v. Walmsley, 1 Fisher, 558, 121, 1853. 1860 ; Parker v. Stiles, 5 McLean, Peek v. Frame, 5 Fisher, 212, 44, 1849. 1871. CHAP. VIII.] DISCLAIMERS. and thus to escape costs. 1 His Honor based this opinion on the fact that more expense might be incurred litigating such a collateral issue, than would be justified by the amount of the costs depending upon its decision. But general rules of law can hardly be based on considerations of what is expedient in a part only of the cases to which those rules purport to apply. It may happen that the costs involved in a particular litiga- tion are large, while the expense involved in proving a neces- sity for a disclaimer of some one claim of the patent is small. The difference between the two sums may sometimes be meas- ured by thousands of dollars, A judgment or a decree may be largely lessened and justly lessened, if a defendant is per- mitted to prove a necessity for a disclaimer of a claim not sued upon. In view of these considerations, it is possible that the law will finally be settled otherwise than as Judge LOWELL'S remark would seem to forecast. 206. Disclaimers are required to state the extent of the interest which is held by the disclaimant in the patent in- volved. 8 If, however, the disclaimant is the original pat- entee, and the disclaimer states that fact, and is silent respect- ing any transfer of any part of it, the fair implication is that he still owns the whole, and that implication is a sufficient statement of the interest of the patentee. 3 So also, if an executor or administrator, in whose name a patent has been extended, states in his disclaimer, that he is the patentee, and refers to the patent as showing his interest, that is a sufficient statement of his interest in the patent. 4 But if one only, of several joint owners or owners in common, of a patent, should file a disclaimer, no other owner could avail himself of its benefits, nor could it aifect a suit brought by all the owners jointly. 5 207. The construction of a patent after a disclaimer has been properly entered, must be the same that it would have 1 American Bell Telephone Co. 4 Brooks v. Jenkins, 3 McLean, v. Spencer, 8 Fed. Hep. ,512, 1881. 432, 1844. * Revised Statutes, Section 4917. 6 Wyeth v. Stone, 1 Story, 294, 3 Silsby v. Foote, 14 Howard, 221, 1840. 1852. 144: DISCLAIMERS. [CHAP. VIII. been if the matter so disclaimed had never been claimed. 1 No disclaimer, in order to be effectual, needs to eliminate any- thing from the description ; though no harm will follow from such elimination if it is confined to matter which is dis- claimed, and which is not needed to show the nature of the in- vention which, after disclaimer, the patent continues to cover. 4 208. Disclaimers may be filed pending a suit on the patent, but in that event, the plaintiff, even if he prevails in the suit, can recover no costs. 3 The filing of a disclaimer, at that stage of affairs, does not affect the pending action, except so far as it may bear upon the question whether or not there was unreasonable delay before filing it. 4 That question is an open one, until decided on its merits, regardless of whether the dis- claimer was filed before or after the bringing of the suit. 8 The sooner a necessary disclaimer is filed, the less danger exists that the preceding delay will be held unreasonable. For that reason, and for that reason alone, it is sometimes wiser to file a disclaimer pending a suit, than to wait till the case is heard, or still longer, till it is decided. 209. An important question arises, when a Circuit Court, before any disclaimer has been filed, decides that a part of the claims of the patent in suit are valid, and have been infringed by the defendant, while another parjt are void for want of novelty, or for want of invention, and ought therefore to be disclaimed. Ought the chancellor, in such a case, to enter a decree for an injunction and an account on the valid claims, and allow the complainant to disclaim the others or not, as lie deems most prudent ? Or ought the chancellor to refuse both the injunction and the account, till the complainant shall have filed a disclaimer ? Or ought the chancellor to grant an injunction whether the complainant disclaims or not, while refusing an account till after lie shall have done so ? Or ought the chancellor in case the complainant declines to disclaim, to 1 Dunbar v. Myers, 94 U. S. 187, 1874. 1876. Kevised Statutes, Section 4917 ; 8 Schillinger v. Gunther, 17 Blatch. Tuck v. Bramhill, 6 Blatch. 95, 1868. 69, 1879. Reed v. Cutter, 1 Story, 590, 3 Smith v. Nichols, 21 Wallace, 117, 1841. CHAP. VIII.] DISCLAIMERS. 145 refuse an injunction, and grant a decree for an account ? The second of these courses has been the practice followed by Jus- tice BLATCHFORD ; ' and by Judge WALLACE ; " Judge SHIP- MAN s and Judge WHEELER.* The third was that adopted by Judge CADW ALLADER. 5 The point has never been decided by the Supreme Court, though the action of that tribunal, in O'Reilly v. Morse ;" appears to favor the first of the four suggested views. The subject is a complex one, and when the law relevant thereto is finally settled, a number of consid- erations will require to be weighed which appear not to have been heretofore considered. The second view of the law operates to deny an appeal from the Circuit Court upon the question of the necessity for a dis- claimer. If the patentee submits to the condition imposed by the chancellor, and if, in order to secure an injunction and an account on his confessedly valid claims, he disclaims the others, and if the Supreme Court, on an appeal by the de- fendant, holds that no disclaimer was necessary in the case, it will be impossible to rectify the error, for there is no way to recall a disclaimer. The third view is open to the same objections as the second, but in a diminished degree ; a degree diminished, in any par- ticular case, in the same proportion that the value of an in- junction, bears to the value of an injunction and an account. It is also open to the objection of inconsistency, for there is probably no reason for refusing an account, which does not apply with equal force to an injunction. The fourth view seems still less reasonable than the third, because an account is incidental to an injunction, and if no in- junction is granted, the power to enter a decree for an account is probably wanting. 1 Myers v. Frame, 8 Blatch. 567, 1882. 446, 1871 ; Burdett v. Estey, 15 4 Matthews v. Spangenberg, 14 Blatch. 349, 1878 ; Christman v. Fed. Rep. 350, 1882. Bumsey, 17 Blatch. 148, 1879. 6 Aiken v. Dolan, 3 Fisher, 207, 8 Brainard u. Cramme, 12 Fed. 1867. Rep. 621, 1882. O'Reilly v. Morse, 15 Howard, * Tyler v. Galloway, 12 Fed. Rep. 121, 1853. 14:6 DISCLAIMERS. [CHAP. VIII. The first view would probably be found to be more consis- tent with convenience and with justice than either of the others. Whenever a Circuit Court decides, that while some of the claims of a patent are valid and have been infringed, others are void and should be disclaimed ; that decision is right or it is wrong. If it is wrong, the patentee ought to have an opportunity to get it corrected by the Supreme Court. On the other hand, if that decision is right, it will be either obviously right or questionably right. If it is obviously right, and if the patentee insists on taking a decree without filing a disclaimer, he will do so at his peril ; for the Supreme Court will probably hold, on the defendant's appeal, that the omis- sion to disclaim was unreasonable, and the whole patent there- fore void. If the decision is questionably right ; that is to say, if there is room for difference of intelligent opinion upon the point, then the patentee ought not to be forced to disclaim till the Supreme Court shall have decided that question against him. No ultimate injustice would result to either litigant, were the first of the four courses adopted by the Circuit Courts ; whereas the adoption of either of the others, involves a denial of the right of appeal : a right provided by the statute in all cases touching patents. 1 1 Revised Statutes, Section 699. CHAPTER IX. REISSUES. 210. Beginning of the history of re- issues. 211. First statute providing for re- issues, 1832. 212. Reissues under the Patent Act of 1836. 213. Amendments made in the re- issue law, by the Patent Act of 1837. 214. Reissues under the Patent Act of 1870. 215. Reissues under the Revised Statutes. 216. Subjects of reissues. 217. The words "specification," "de- fective," and " insufficient" de- nned. 218. Faults which justify reissues. 219. Faults in claims which justify reissues. 220. Inadvertence, accident, and mistake. 221. Question of the conclusiveness of the Commissioner's decision relevant to existence of reissua- ble faults, and relevant to the existence of inadvertence, acci- dent, or mistake. 222. The question of the last sec- tion discussed and supported in the affirmative. 223. The same question discussed and supported in the negative. 224. Great importance of the ques- tion. 225. The text writer's opinion of the true answer. 226. The doctrine of the case of Miller v. Brass Co. 227. The length of the delay contem- plated by the doctrine of Miller v. Brass Co. 228. Effect of delay in other cases than those of broadened claims. 229. The statute relevant to two years' prior use or sale, has no application to reissues as such. 230. Surrender of patent. 231. Effect of surrender with, and also without reissue. 232. Reissues of reissued patents and of extended patents, but not of expired 'patents, are proper. 233. Same invention. 234. Same invention does not in- clude whatever was produced by the patentee before the original patent. 235. Same invention is not con- fined to invention claimed in original. 236. Inventions shown in drawings and inventions shown in models. 237. Inventions shown in drawings only. 238. Inventions shown in models only. 239. " Where there is neither model nor drawing." 240. New matter. 241. Rule for ascertaining same- ness of invention ; and qualifica- tions of that rule. 148 REISSUES. [CHAP. rx. 242. Reissues must be for same in- vention as prior reissues, and also for same invention as orig- inals. 243. Legal presumption of sameness of invention. 244. Omission, as it affects same- ness of invention. 245. Reissues for sub-combinations. 246. Reissues for single devices. 247. Reissues as affected by substi- tution of equivalents. 248. Reissues entitled to a liberal construction. 249. Reissued patents may be valid as to some claims while void as to others. 250 Executors, administrators, and assigns may procure reissues. 251. One of several executors may procure a reissue. 252. Rights of assignees in reis- sues. 253. The rights of grantees in re- issues. 254. The legal effect of reissued patents. 210. IN 1821 James Grant, of Providence, Rhode Island, received letters patent of the United States for an im- proved mode of manufacturing hat bodies. In 1825 he pre- sented a petition to Henry Clay, Secretary of State, stating that the specification of his patent was defective, and praying that his patent might be cancelled, and a new and correct one granted, embracing the same improvements, so far as they were set forth in certain new specifications, drawings and ex- planations which accompanied the petition. Though there was, at that time, no statute which authorized any such pro- ceeding ; yet, on the advice of William Wirt, the Attorney- General, and in the name of John Quincy Adams, the Presi- dent of the United States, Mr. Clay cancelled the letters patent of Mr. Grant, and thereupon issued to him new letters patent, for the same invention, and for the residue of the term cov- ered by the original document. Annexed to the new letters, and forming part thereof, were the new specifications, draw- ings and explanations, which had accompanied Mr. Grant's petition. In the case of Grant v. Raymond ' the validity of this pro- ceeding was called in question in the Supreme Court ; and was argued in the negative by Daniel Webster. The Supreme Court sustained the validity of the reissued patent, on the general spirit and object of the patent law ; not on its letter. 1 Grant v. Raymond, 6 Peters, 243, 1832. CHAP. IX.] REISSUES. 149 In delivering the opinion Chief Justice MARSHALL said : " If the mistake should be committed in the Department of State, no one would say that it ought not to be corrected. All would admit that a new patent, correcting the error, and which would secure to the patentee the benefits which the law in- tended to secure, ought to be issued. And yet the act does not in terms authorize a new patent, even in that case. Its emanation is not founded on the words of the law, but it is indispensably necessary to the faithful execution of the solemn promise made by the United States. Why should not the same step be taken for the same purpose, if the mistake has in- nocently been committed by the inventor himself ?" And his Honor further said : "If, by an innocent mistake, the instru- ment introduced to secure his privilege fails in its object, the public ought not to avail itself of this mistake, and to appro- priate the discovery without paying the stipulated considera- tion. The attempt would be disreputable in an individual, and a Court of Equity might interpose to restrain him." 211. in accordance with the spirit of the decision in Grant i). Raymond, and within a few months after that decision was made, Congress enacted a statute to regulate the granting of reissued letters patent. ' That statute provided, in effect, that whenever any patent should be invalid or inoperative, because the inventor, by inadvertence, accident or mistake, and with- out any fraudulent or deceptive intention, failed to conform his specification to the then existing statutory requirements ; it should be lawful for the Secretary of State, upon the surren- der to him of such patent, and the delivery to him of a sufficient statutory specification, to cause a new patent to be granted to the same inventor, for the same invention, and for the residue of the term of the original patent. That statute also provided that the right to receive a reissue, should extend to executors, administrators or assigns ; and that the reissue patent should be liable to the same defences as the original ; and that no public use of the invention, after the grant of the original patent, should prejudice the right of the patentee to 1 4 Statutes at Large, Ch. 162, Section 3, p. 559. 150 KEI88UES. [CHAP. rs. recover for infringement of the reissue patent, committed after the grant thereof. 212. The Patent Act of 1836 l repealed all prior statutes relevant to patents, and provided a more elaborate system in place of the repealed laws. Section 13 of that Act referred to reissues, and provided, in effect, that whenever any patent should be inoperative or invalid because the inventor had, by inadvertence, accident, or mistake, and without any fraudu- lent or deceptive intention, made his description or specifica- tion defective or insufficient, or had claimed in his specifica- tion more than he had a right to claim as new ; it should be lawful for the Commissioner of Patents, upon the surrender to him of such patent, to cause a new patent to be issued to the same inventor, for the same invention, in accordance with the inventor's corrected description and specification, and for the residue of the term of the original patent. This statute also provided that the right to receive a reissue should extend to executors, administrators and assigns, and that the reissued patent, together with the corrected description ano^ specifica- tion, should have the same effect in law, on the trial of all actions thereafter commenced for causes subsequently accru- ing, as though the same had been originally filed in such cor- rected form before the issuing of the original patent. 213. The Patent Act of 1837 a made some additions to the statute of 1836, relevant to reissues. Section 5 recognized a right in a patentee to demand and receive several reissued patents for distinct parts of the subject-matter of his surren- dered patent. And Section 8 provided, that whenever a pat- ent should be returned for reissue, the claims thereof should be subject to revision and restriction, in the same manner as were original applications for patents ; and that the Commis- sioner should not grant any reissue, until the applicant should have entered a disclaimer, or altered his claim, in accordance with the decision of the Commissioner ; and that the applicant, if dissatisfied with such decision, should have the same remedy 1 5 Statutes at Large, Ch. 357, p. * 5 Statutes at Large, Ch. 45, p. 117. 191. CHAI>. IX.] REISSUES. 151 by way of appeal, that the law provided in cases of original ap- plications. 214. The Patent Act of 1870 l substantially re-enacted the law of reissues as it had been embodied, for more than thirty years, in the statutes of 1836, and 1837 ; but re- enacted that law with a few modifications and additions. Where the old law used the phrase " defective or insufficient description or specification,' ' the new law used the words " de- fective or insufficient specification." Where the old statute made it lawful for the Commissioner to reissue a patent, the new statute made it obligatory upon him to do so. Where the old law recognized a right in a patentee to demand and re- ceive several reissue patents in the place of one surrendered patent, the new law provided that the Commissioner might, in his discretion, cause several such patents to be issued upon the demand of the applicant. The provision of the old statute, that the applicant, if dissatisfied with the decision of the Commissioner, should have the same remedy and be entitled to the same privileges and proceedings, as were pro- vided by law in the case of original applications for patents, was omitted in the new statute ; but its effect was retained, by expressly mentioning reissues in those sections of the new statute, which provided for that remedy, and for those priv- ileges and proceedings. 1 Section 33 of the new statute pro- vided further, that where a patent was to be reissued to an assignee of the inventor, the application should be made, and the specification be sworn to, by the inventor, if he be living. The Patent Act of March 3, 1871, 3 prescribed, that the provi- sion of Section 33, just mentioned, should not be construed to apply to any patent, issued and assigned before July 8, 1870 : the date of the approval of the Act of which that section formed a part. Another new provision of the Statute of 1870, was as follows : " No new matter shall be introduced into the specification, nor in case of a machine patent shall 1 16 Statutes at Large, Ch. 230, p. Sections 46 to 52, p. 204. 198 - 3 16 Statutes at Large, Ch. 132, p, 8 16 Statutes at Large, Ch. 230, 583. 152 EEIS8UE8. [CHAP. ix. the model or drawings be amended, except by each other ; but where there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the original in- vention, and was omitted from the specification by inadver- tence, accident, or mistake, as aforesaid. " 215. Section 4916 of the Revised Statutes is substantially a copy of Section 53 of the Statute of 1870. Section 4895 of the Revised Statutes, re-enacted the provision above cited from Section 33 of the Act of 1870, coupled with the statu- tory construction of that provision, which was contained in the Patent Act of 1871, and which was above explained. Sec- tions 46 to 52 of the Act of 1870, were re-enacted as Sections 4909 to 4915 of the Revised Statutes. Thus the law of reis- sues underwent no change when the Revised Statutes were ap- proved. The reissue provisions which were embodied in the Act of 1870, are still the statutes which govern the subject. The meritorious ground Jfor reissues, as stated by the Supreme Court in Grant v. Raj'mond, has now been set forth ; and the subsequently enacted and gradually developed statu- tory law on the subject has been explained. To explore the great mass of relevant adjudicated cases, and to extract from those cases the detailed doctrines of the law of reissues, is the engaging work upon which it is now in order to enter. 216. To be the lawful subject of a reissue, a patent must be invalid, or it must be at least inoperative. 11 All patents that are invalid, are also inoperative. If the two words had, in the statutes, been always connected with the word " and ;" there would be ground for an argument that they were used synonymously. In fact, however, they have always been con nected with the word " or ;" thus indicating that they were not intended to signify the same thing. "What they do re- spectively mean, is to be ascertained by considering other pro- visions of the statute ; namely those provisions which indicate 1 16 Statutes at Large, Ch. 132, 1836, Section 13 ; Act of 1870, Sec- 'Section 53, p. 206. tion 53 ; Kevised Statutes, Section 1 Act of 1832, Section 3 ; Act of 4916. CHAP. IX.] REISSUES. 153 the causes from which either invalidity or inoperativeness must have sprung, in order to make patents reissuable. To have that effect, either of those faults must have resulted from a defective or insufficient specification, or from the patentee claiming more than he had a right to claim as new. This last cause of fault, was first mentioned in the. statute of 1836. In the following year, Congress provided that patents should no longer be held to be invalid, on that ground, provided proper disclaimers were reasonably entered. 1 Ever since 1837, there- fore, faults in patents, arising from patentees claiming more than they had a right to claim, have been as curable by dis- claimers as by reissues ; and, as the remedy by disclaimer is both cheaper and better than the other, the remedy by re- issue has seldom or never been sought as a cure for a fault of o that class. The case law on the subject of reissues, is there- fore substantially confined to reissues which were granted be- cause the surrendered patents were alleged to be invalid or in- operative, by reason of defective or insufficient specifications. 217. The meaning of the word " specification" is that of the words " description and claim" when it is used, in the stat- utes, separately from both those words. 2 In the reissue sec- tion of the statute of 1836, the word " description" was used in connection with the word " specification" and thus limited the meaning of the latter to the signification of the word "claim." 3 On the other hand, in the fourth sentence of Section 4916 of the Revised Statutes, the word " specifica- tion" is used in immediate connection with the word " claim," and is therefore limited, in that place, to. the meaning of the word " description." The word " defective" and the word " insufficient" are not synonymous in this statute, as at first thought they may appear to be. The former word means " bad," and the latter means " lacking. " A description may be complete, while it is obscure in some of its parts. In such a case, it is defective. On the 1 5 Statutes at Large, Ch. 45, Sec- 1880. tions 7 and 9, p. 193. 3 Wilson v. Coon, 18 Blatch. 536, 8 Wilson v. Coon, 18 Blatch. 535, 1880. 154 BEISSTJES. [CHAP. ix. other hand, it may be perfectly clear, as far as it goes, while omitting all reference to some parts of the thing described. In such a case, it is insufficient. So also, a claim may mistily cover the whole invention described, but being liable to be misunderstood, it is defective. On the other hand it may be entirely clear, while it is narrower than the invention, and therefore insufficient to cover and secure the latter. 218. From the foregoing it follows, that ever since 183G, those patents have been reissuable which were invalid or in- operative, by reason of defective or insufficient descriptions or claims ; provided their faults arose from inadvertence, acci- dent or mistake, and without any fraudulent or deceptive in- tention. This proviso is equally imperative in all cases. As- suming it to be satisfied in all, and disregarding the nugatory provisions relevant to reissues when the patentee has claimed too much, it appears that the faults which make patents reis- suable are four in number. 1. Invalidity arising from defec- tive description. 2. Invalidity arising from insufficient de- scription. 3. Invalidity arising from defective claims. 4. Inoperativeness arising from insufficient claims. The nature of the first three of these faults, is explained in the chapter on letters patent. Whether or not a particular patent was or is invalid for either of those reasons, may be de- termined, by the application thereto of the relevant rules and doctrines set forth in that chapter. Specifications have, for many years, been generally written with such a degree of skill and care, that comparatively few letters patent have, in recent times, been characterized by either of the first two faults. Those which have possessed the third fault, have, in many cases, been made to possess it, in order to deceive or de- fraud the public, and not from inadvertence, accident or mis- take. Defective claims are frequently nebulous claims, in- tended to mean much or to mean little, according to the exi- gencies of future events. To the public, they arc intended to convey -a signification so wide as to deter others than the^ patentee, from accomplishing the same result by other means than those which the patentee is entitled to claim. To the courts, they are intended to convey a meaning so narrow as CHAP. IX.] BEISSUES. 155 to enable them to successfully run the gauntlet of litigation. For such purposes of duplicity, nebulously defective claims are more useful than clear and perfect ones would be. Those who secure such patents, therefore seldom surrender them for reissue, except in cases where the defect arose from the absence of verbal skill, in the writers of the claims, rather than from the presence of intent to deceive, in the owners of the patents. The considerations stated in this paragraph, account for the well-known fact, that most of our reissued patents were reissued because of alleged inoperativeness arising from alleged insufficiency of claims. 219. Claims are the only operative parts of specifications. If an inventor has produced two or more inventions, so allied that they may properly be secured to him in one letters pat- ent ; and if he fully describes all of those inventions in the descriptive part of his specification, but covers only one of them by his claims ; then his patent is operative as to one of those inventions, and inoperative, as to the others. Inopera- tiveness of that kind, is sufficient to lay the foundation of a right to a reissue. 1 Reissues granted in such cases are called broadened reissues. Though the statute does not, under that name, authorize reissues of that kind, they are authorized by the general terms of the law ; 3 and have been upheld by the Supreme Court in many cases. 3 220. Inadvertence, accident or mistake must have been the source of the fault in letters patent, in order to make them re- issuable. 4 Such inadvertence or accident may have been suf- fered, or such mistake may have been committed, by the patentee, or by the Commissioner of Patents. 6 The statute is satisfied on this point, where the patent was inoperative by 1 Anilin v. Higgin, 15 Blatch. 291, Goodyear, 9 Wallace, 788, 1869 ; 1878; Wilson v. Coon, 18 Blatch. Corn-Planter Patent, 23 Wallace, 217, 535, 1880. 1374 ; Marsh v. Seymour, 97 U. S. 4 Miller v. Brass Co. 104 U. S. 354, 356, 1877. 1881. 4 Revised Statutes, Section 4916. 3 Battin v. Taggert, 17 Howard, B Grant v. Raymond, G Peters, 218, 74, 1854 ; Morey v. Lockwood, 8 1832. Wallace, 230, 1868 ; Rubber Co. v. 156 BEISSUES. [CHAP. ix. reason of insufficient claims, if those claims were made too few or too narrow because the patentee was mistaken about the state of the art, 1 or because the patentee or his solicitor, when concerting the claims, Inadvertently failed to make them as extensive as the invention. 3 So also, the statute is satisfied, where the patent was inoperative by reason of in- sufficient claims, if . those claims were made too narrow be- cause the Commissioner, on account of an erroneous opinion entertained by him, refused to allow them to be made as broad as they ought to have been ; * or because of an erroneous de- cision made by him in an interference proceeding. 4 221. The Supreme Court has recognized the fact, that patents have been reissued by the Commissioner, in some cases where there was no statutory ground therefor ; * that is to say, in some cases where the patents surrendered were neither invalid nor inoperative ; or if invalid or inoperative, were not so by reason of a defective or insufficient specification ; or if invalid or inoperative by reason of a defective or 'insufficient specification, were not so because of inadvertence, accident or mistake. It is, however, still an unsettled question whether any of these matters can be investigated in courts. The point is so important, and involves so many cases and considera- tions, that it deserves and must receive an extensive explana- tion in this book. To that explanation it is now convenient to proceed. 222. It has several times been said by divers justices of the Supreme Court, that the Commissioner, when granting a reissue, is presumed to have decided that some statutory ground for a reissue existed ; and that his decision, on that point, is not subject to review, in any suit for infringement.' 1 National Spring Co. v. Mfg. Co. 6 Burr v. Duryee, 1 Wallace, 531. 12 Blatch. 89, 1874. 18G3 ; Leggett v. Avery, 101 U. 8. * Miller v. Brass Co. 104 U.S. 352, 259, 1879. 1881. Story, J., in Philadelphia and 3 Morey v. Lock-wood, 8 Wallace, Trenton Railroad Co. v. Stimpson, 230, 1868. 14 Peters, 448, 1840 ; McLean, J., 4 American Shoe-Tip Co. v. Protec- in Stimpson v. Railroad Co. 4 How- tor Co. 2 Bann. & Ard. 651, 1877. ard, 404, 1846 ; Clifford, J., in CHAP. IX.] BEIS8UE8. 157 * In the first of these cases, the point was not before the court for decision. The question at bar was whether the re- issued patent needed to contain any recitals of the particular statutory faults on account of which it was granted. The de- cision on that point was in the negative. In stating the grounds upon which that decision was based, Justice STORY overstepped the issue, and, when speaking of the evidence of reissuability laid before the Commissioner, remarked : "No other tribunal is at liberty to re-examine or controvert the sufficiency of such proof, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency. " In the second case, the Supreme Court found a number of errors in the charge to the jury which had been given by the judge in the court below. The first two of those errors, had no relevancy to the point now under inspection. On that point the judge had told the jury that the original patent was inoperative and invalid by reason of non-compliance with the requisites of the statute ; but that the plaintiff had not made out such a case of inadvertence, accident, or mistake as justi- fied a reissue. In delivering the opinion of the Supreme Court, Justice McLEAN did not expressly characterize this part of the charge as erroneous, as he had expressly done relevant to the first two points. The following paragraph contains what he said on the subject : " By the thirteenth section of the Act of 1836, ( if the pat- ent shall be inoperative or invalid, by reason of a defective or insufficient description or specification, ' &c. , ' if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be law- ful ' to surrender it, fec. Now, as in granting the renewed patent, the officers of the government act under the above provisions, their decision must at least be considered primd facie evidence that the claim for a renewal was within the Seymour v. Osborne, 11 Wallace, Strong, J., in Ball v. Langles, 102 516, 1870 ; and in Collar Co. v. Van U. S. 129, 1880. Dusen, 23 Wallace, 558, 1874, and 158 BEI88UE8. [CHAP. IX. statute. But this would not be conclusive against fraud in the surrender and renewal, which, on the evidence, would be a matter for the jury. And we suppose that the inquiry in regard to the surrender is limited to the fairness of the trans- action. In whatever manner the mistake or inadvertence may have occurred is immaterial. The action of the govern- ment in renewing the patent must be considered as closing this point, and as leaving open for inquiry, before the court and jury, the question of fraud only." What his Honor said about prima facie evidence, is un- doubtedly the law ; but what he said about fraud, has since been decided to be incorrect. It is now settled that questions of fraud, in*obtaining reissues, cannot be raised in any infringe- ment suit. ' In the third case cited, the defendant did claim, in its an- swer, that the reissued letters patent were void, because no evidence was produced before the Commissioner, to show that the originals were inoperative or invalid. The defendant, however, introduced no proof to support that statement of his pleading, and the point was, for that reason, necessarily over- ruled. The case furnished no means of reviewing the Com- missioner's decision, and therefore there was no occasion for the court to decide whether it was, in law, reviewable. Jus- tice CLIFFORD however proceeded to say, that : " Where the Commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for infringement, is final and conclusive, and is not re-examinable in such a suit in the Circuit Court, unless it is apparent upon the face of the patent that he has exceeded his authority, that there is such a repugnancy between the old and the new pat- ent that it must be held, as matter of legal construction, that the new patent is not for the same invention as that embraced and secured in the original patent." Battin v. Taggert and O' Reilly v. Morse were cited by Justice CLIFFORD to support the foregoing obiter dictum. There was, however, no such question decided in either of those cases. In Battin v. Tag- 1 Eureka Co. v. Bailey Co. 11 Wallace, 492, 1870. CHAP. IX.] REISSUES. 159 gert, Justice McLfiAN casually remarked that in Stimpson v. Railroad Co. it was held ' ' that the proceeding before the Commissioner, in the surrender and reissue of a patent, is not open for investigation, except on ground of fraud." In O'Reilly v. Morse, the question was raised by the defendant whether Morse's reissued patent was not void because his sur- rendered patent was neither inoperative nor invalid. The court decided that the reissued patent was not void, but in so de- ciding the court did not explain whether it agreed in opinion with the Commissioner touching the invalidity or inoperative- ness of the surrendered patent, or whether it found itself with- out power to review his decision on that point. In the case of Collar Co. v. Van Dusen, the question was, whether the reissued patent and the surrendered patent were for the same invention. That question was readily and rightly decided in the negative, and the patent therefore held void. But Justice CLIFFORD said in passing : " Unless, however, it is apparent upon the face of the new patent that the Com- missioner has exceeded his authority, his decision is final and conclusive, as the jurisdiction to reissue patents is vested in him subject to a single exception, that if there is such repug- nancy between the old and the new patent that it must be held, as matter of legal construction, that the reissued patent is not for the same invention as that embraced and secured in the original patent, then the reissued patent is invalid." In the case of Ball v. Langles the question .was also whether the surrendered patent and the reissued patent were for the game invention. Here also that question was quickly decided in the negative and the patent held void. But Justice STRONG also said in an obiter dictum that : " The commissioner was invested with authority to determine whether the surrendered patent was invalid by reason of a defective or insufficient spec- ification, or because the patentee had claimed more than he had a right to claim as new ; and if he found such to be the case, and found also that the error had been due to inadver- tence, accident, or mistake, without fraud, his decision was con- clusive, and not subject to review by the courts." In accordance with the obiter dicta of the Supreme Court, 160 EEI88UE8. [CHAP. IX. in the five cases thus reviewed, the same doctrine has been announced in other obiter dicta by Circuit Courts in many cases ; and in a few Circuit Court cases it has been judicially decided to be law. 1 223. But the other side of the question, stated in Section 221 of this book, is also supported by several obiter dicta of the Supreme Court, and by several strong arguments in deci- sions of several of the Circuit Courts. In Burr v. Duryee," Justice GRIEK said, that the patentee, in his original patent, claimed all he had a right to claim, and claimed no more ; and that there was no error from inadver- tences, accident or mistake. Now these statements of fact, were contrary to the decision of the Commissioner, which was involved in his having reissued that patent. In this instance, therefore, the Supreme Court did in fact review that decision, and did in fact pronounce it wrong. In Goodyear v. Rubber Co., 3 Justice S WAYNE said that, " The surrender was made by the executor, for the reason that the specification was defective and required amendment. This the law permitted, if the facts brought the case within the provisions of the statute. The Commissioner was charged with the duty of examining the facts and deciding upon the application. His judgment is shown in the result. Upon comparing the context of the specifications of the surrendered and reissued patent, and giving to each a reasonable interpre- tation, we are satisfied that the decision was correct, and we see no reason to reverse it." This therefore was an instance in which the Supreme Court appears to have reviewed the de- cision of the Commissioner relevant to the defective character of the specification of the original patent, and to have pro- nounced that decision to be right. In saying that they saw no reason to reverse it, they implied that they had jurisdic- tion to reverse it, had any such reason been seen. 1 Smith v. Merriam, 6 Fed. Hep. 1863. 713, 1881 ; Selden v. Gas Burner Co. 3 Rubber Co. v. Goodyear, 9 Wal- 9 Fed. Rep. 390, 1881. lace, 795, 1869 4 Burr v. Duryee, 1 Wallace, 571. CHAP. IX.] BEISSUES. 161 In James v. Campbell, 1 Justice BRADLEY said that, " Where it is apparent on the face of the patent, or by con- temporary records, that no such inadvertence, accident, or mistake, as claimed in a reissue of it, could have occurred, an expansion of the claim cannot be allowed or sustained. ' ' This is a declaration that courts will review and reverse the decision of the Commissioner, on the question of the existence of inad- vertence, accident, or mistake, in certain cases where certain kinds of documentary evidence shows that decision to have been wrong. In Whitely v. Swayne," Judge LEAVITT decided that the original patent was not inoperative or invalid by reason of a defective or insufficient specification ; and that the reissues were therefore not granted in accordance with the statute ; and that when the statutory requirements relevant to reissues are not complied with, it is within the power of the court and its plain duty to hold the reissue void. In Wicks v. Stevens, 3 Justice BRADLEY, when sitting in the Circuit Court for the Eastern District of Texas, decided that neither inadvertence, accident, nor mistake, did in fact cause the particular omission, in the claim of the original patent, which the claim of the reissued patent supplied ; and that therefore the latter claim could not be sustained. In Giant Powder Co. v. Vigorit Powder Co., 4 Justice FIELD, when sitting in the Circuit Court for the District of California, delivered a long opinion upon this subject. The substance of that opinion appears to be, that the Commis- sioner has no jurisdiction to reissue any patent, unless the original was chargeable with some of the faults which, ac- cording to the statute, make patents reissuable ; and that^if an original patent shows on its face, that it did not have either of those faults, it is the duty of the court to hold any reissue thereof to be void. 1 James v. Campbell, 104 U. S. 3 Wicks v. Stevens, 2 Bann. & 371, 1881. Ard. 318, 1876. a Whitely v. Swayne, 4 Fisher, ]23, 4 Giant Powder Co. v. Vigorit 1865. Powder Co. G' Sawyer, 508, 1880. 162 REISSUES. [CHAP. IX. In Flower v. Rayner, 1 Judge NIXON decided that where an original patent shows upon its face, that no statutory ground for a reissue existed therein, any reissue of that patent is void, because unauthorized by law ; and that, though the decision of the Commissioner on this point is presumed to be correct, yet the courts are not obliged to accept it as final. In Searls v. Bouton," Judge WHEELER entered a final de- cree adjudging, among other things, that original letters pat- ent No. 150,195 was not inoperative or invalid by reason of a defective or insufficient specification, and that the Commis- sioner had no jurisdiction to accept the surrender of said orig- inal letters patent, and to grant reissue No. 9297 thereon ; and that said reissue was therefore void. 224. Great interests are involved in the question stated in Section 221 and discussed in Sections 222 and 223. So many patents have doubtless been reissued in cases where the orig- inals were not in fact reissuable, that many hardships will surely follow the settlement of the law upon the point, and whether it is settled for or against the finality of the Commis- sioner's decision. If settled for that finality, the public will have to pay tribute in a class of cases, relevant to which it has never consented thus to be taxed : will have to submit to a class of patents which have no deeper foundation than the will of the Commissioner of Patents. If the question is finally set- tled against the finality of the Commissioner's decision, many meritorious inventors will have been misled by the obiter dicta of Justices STORY, McLEAN, CLIFFORD, and STRONG into sur- rendering their valid patents, and receiving for them nothing but worthless parchment. In view of this dilemma, it was a misfortune that the Supreme Court did not decide the question, when it arose in the case of O' Reilly v. Morse. A single sentence of decision in that case, would have obviated pages of dicta which have since been scattered through many others, and would have authoritatively guided the citizens upon a point which no amount of dicta can settle. ' Flower v. Eayner, 5 Fed. Eep. Searls v. Bouton, 12 Fed. Eep. 793, 1881. 626, 1881. CHAP. IX.] REISSUES. 163 225. To the present text writer, the question stated in Section 221 appears to admit of a plain and unassailable an- swer ; and that answer is the following. The decision of the Commissioner relevant to the existence of a statutory ground for a reissue, is not conclusive in any court ; because he has no jurisdiction to grant any reissue in the absence of such a statutory ground ; and because the statute does not make him the final judge of his own jurisdiction. 226. Miller v. Brass Co. 1 is a celebrated case, which in- troduced a new doctrine into the patent laws of the United States. That doctrine is precisely this. The right to obtain a broadened reissue, is lost by a long lapse of time, after the date of the original, and before the application for that reissue. If that doctrine has any prototype in any prior deliverance of any United States judge, that prototype must be found in a charge which Chief Justice TANEY delivered to a jury some- what early in his judicial career. 3 In that case, the third par- agraph of his Honor's instruction was as follows : " The plaintiff, at the time of his application for the patent of 1834, had a right to surrender the patent of 1829, and take out a. corrected one, if the said patent was invalid, either by reason of the defective description of the improvement, or by reason of his having claimed, as new, more than he was entitled to ; provided, the error had arisen from inadvertence or mistake, and the plaintiff proceeded to correct it within a reasonable time after it was discovered." The last proviso of this in- struction, differs from the doctrine of Miller v. Brass Co., in that, the latter makes the fatal lapse of time to begin at the date of the original patent, whereas the former makes it to begin when the fault of the original patent is discovered. This difference is a substantial one ; because reissuable faults in letters patent are often, and perhaps generally, of such a character that they can be detected only by persons learned in the patent law ; and because a patentee may honestly keep his patent by him for years, without subjecting it to profes- 1 Miller u. Brass Co. 104 U. S. 350, ' Knight v. Railroad Co. Taney's 1881. Circuit Court Decisions, 107, 1840. 164: REISSUES. [CHAP. ix. sional scrutiny. The doctrine of Miller v. Brass Co. , must therefore find its foundation and genesis elsewhere than in the opinion of Chief Justice TANEY ; and elsewhere than in any United States decision made and reported before that doctrine was promulgated in that case in January, 1882. ' 227. The length to which delay must be drawn out, in order to lose the right to apply for a broadened reissue, is as yet unknown. No clearer light can, at present, be thrown upon that inquiry, than can be thrown by stating the various spaces of time, which in various cases, have already been found long enough to be fatal. In Miller v. Brass Co. itself, the delay continued for fifteen years. In three later Supreme Court cases, the delay was for fifteen, fourteen, and thirteen years, respectively. 1 In each of two cases on the circuit, the delay was thirteen years ; * and in another, it was ten years ; * and two others, it was nine years ; B and in another, it was five years ; 8 and in one it was only twenty months ; 7 and in all of them it was held to have been long enough to lose the right to a broadened reissue, and therefore to have made void the broadened claims of the respective reissues at bar. 228. Reissued patents sought for and granted for other faults than insufficient claims, will perhaps hereafter be sub- jected to a doctrine of delay. If so, more delay will probably be required to kill such patents, than is required to kill a broadened claim, for it was said in Miller v. Brass Co. that the correction of a patent, by means of a reissue, where it is invalid or inoperative for want of a full and clear description of the invention, cannot be attended with such injurious re- sults, as follow from the enlargement of a claim ; and hence a 1 Battin v. Taggert, 17 Howard, * Sheriff v. Fulton, 12 Fed. Kep. 85, 1854. 137, 1882. * Johnson v. Railroad Co. 105 6 Hayes v. Seton, 12 Fed. Eep. U. 8. 539, 1881 ; Matthews v. Ma- 123, 1882 ; Holt v. Keeler, 13 Fed. chine Co. 105 U. S. 54, 1881 ; Bantz Bep. 464, 1882. v. Frantz, 105 U. S. 160, 1881. Streit v. Lawter, 11 Fed. Hep. 3 Combined Patents Can Co. v. 309, 1882. Lloyd, 11 Fed. Kep. 149, 1882 ; New- ' New v. Warren, 22 Off. Gaz. 588 ton v. Mfg. Co. 14 Fed. Kep. 470, 1882. 1882. CIIAP. IX.] REISSUES. 165 reissue may be proper in such cases, though a longer period has elapsed since the issue of the original patent. 229. The statutory provision which makes a patent void, if the invention it covers was in public use or on sale more than two years before that patent was applied for, is a matter which does not apply to reissued patents, and the applications therefor. 1 The reissue application is considered as appended to the original application, 2 and the two years ceases to run with the tiling of the latter. 230. A surrender of a patent, when made with an appli- cation for a reissue, need not be made in writing ; and there- fore the statement in a reissue that it is a reissue of a surren- dered former reissue, is not negatived by the production of a document purporting to be a surrender of the original patent, and apparently intended to have been a surrender of the for- mer reissue. s The presumption that the proper patent was surrendered, by parol if not otherwise, is not negatived by proof of an ineffectual attempt to surrender it in writing. 231. Patents surrendered prior to July 8, 1870, were thereby cancelled in law, whether a reissue was granted there- on or not. 4 Patents surrendered since July 8, 1870, were also cancelled thereby if reissues were granted thereon, but not otherwise. 5 No damages or profits can ordinarily be re- covered, for any infringement of a surrendered patent com- mitted prior to its cancellation, by means of any judgment or decree entered after that time ; but money recovered or volun- tarily paid, on account of such infringement, prior to such can- cellation, cannot be recovered back. 6 Nor will any such can- cellation have any effect upon any unpaid judgment or decree which was entered before that cancellation took effect. The right of the patentee, in such a case, rests upon his judgment 1 Shaw v. Lead Co. 11 Fed. Rep. 1863 ; Peck v. Collins, 103 U. S. 664, 714, 1882. 1880. * Grant v. Raymond, 6 Peters, 218, & 16 Statutes at Large, Ch. 132, 1832. Section 53, p. 206 ; Revised Statutes, 8 Dental Vulcanite Co. v. Wether- Section 4916. bee, 2 Clif. 563, 1866. Moffitt v. Garr, 1 Black. 273, 4 Moffitt v. Garr, 1 Black. 273, 1861. 166 REISSUES. [CHAP. ix. or decree, and not on his patent. 1 The decision just cited, is a decision of the Supreme Court, delivered by Justice STRONG, but it was never inserted in the Supreme Court reports. The only exception, yet established, to what the last para- graph states is the ordinary rule relevant to profits and dam- ages which accrued from the infringement of a surrendered patent before its cancellation, was established in a case where the defendant infringer was himself the patentee, and where the plaintiffs were his equitable grantees, as to that part of the territory of the United States, included w r ithin the boun- daries of Connecticut and New York. In that case, the pat- entee infringed his grantee's rights, and afterward surren- dered and reissued the patents involved. The Supreme Court decided that the defendant held his patents, all the time in trust for the plaintiffs, to the extent of their territory ; and that he must therefore account to them for the profits which he had made from the use of the trust property, within that territory, regardless of the fact that he had surrendered and reissued those patents, after making a part of those profits. 2 232. A reissued patent may be surrendered and again re- issued, under the same circumstances as those which make an original patent reissuable. 3 So also, a patent might be reis- sued during its extended term, as well as during its first term, when, as formerly, extensions of patents were provided for by law. 4 But patents reissued during their respective ex- tended terms will be more likely to suffer from the doctrine of Miller v. Brass Co. 5 than those reissued during their first terms, because of the generally longer lapse of time after the dates of the originals. No reissue can be granted of a patent after its final expiration ; even where that expiration resulted from the fact that the same invention had been patented in a foreign country before it was patented in the United States ; 1 Mevs v. Conover, 11 Off. Gaz. Fed. Rep 390, 1881. 1111, 1876. < Wilson v. Roussean, 4 Howard, 1 Littlefield u. Perry, 21 Wallace, 646, 1846 ; Gibson u. Harris, 1 Blatch. 205, 1874. 167. 1846. 3 French v. Rogers, 1 Fisher, 136, Miller v. Brass Co. 104 U. 8. 1851 ; Selden v. Gas Burner Co. 9 350, 1881. CHAP. IX.] REISSUES. 167 and from the fact that the foreign patent has expired, though the United States patent sought to be reissued, does not ap- pear, on its face, to have done so. 1 233. Only " the same invention" can be covered by a re- issued patent. 2 This quoted phrase occurs, in this relation, in all the relevant statutory provisions, now or heretofore in force in the United States. But neither of those statutes ob- viously indicates whether the phrase refers to whatever inven- tion was made by the patentee, and actually described in his original application ; or refers to whatever invention was sub- stantially suggested, indicated or described in the patentee's original letters patent, drawing or model ; or refers to whatever invention was described or indicated in the original letters patent or drawing of the patentee ; or refers to whatever invention was described by him in his original letters patent ; orrefers only to whatever invention was actually claimed by him in that original document. Information on this subject, is how- ever to be had in the decisions of the courts. As the question is almost as complex as it is important, and as the ad- judged cases, and judicial obiter dicta, which bear upon it, lack something of harmony ; it is necessary in this place to engage in an extensive search among the precedents, and in a careful comparison of conflicting arguments and opinions. 234. To show that a given invention was actually made by a patentee, before applying for his original patent, and was intended by him to be incorporated into that patent ; is not enough to entitle the patentee to such a reissue of the pat- ent, as will cover that invention.* In the case cited, Alfred Nobel appeared to be the inventor of several processes and compositions of matter, useful in the business of blasting. His original application for a patent described and claimed mixtures of gunpowder, and of gun-cotton, and of rocket powder, with nitro-glycerine ; and described and claimed sev- 1 C W. Siemens' Appeal, 11 Off. ent Act of 1870, Section 53 ; Revised Gaz. 1107, 1877. Statutes, Section 4916. 8 Patent Act of 1832, Section 3 ; s Powder Co. v. Powder Works, Patent Act of 1836.. Section 13 ; Pat- 98 U. S. 126, 1878. 168 REISSUES. {CHAP. ix. eral processes for exploding pure nitre-glycerine. This appli- cation was amended by Nobel's solicitor, in such a way as to eliminate the mixtures, and confine it to the processes ; and on the specification so amended a patent was granted. That pat- ent was surrendered and reissued in four divisions ; the last being for the mixtures described and claimed in the original application, but not mentioned in the specifications of the original letters patent. This last divisional patent was in its turn surrendered and reissued in two subdivisions, one being for the mixture of gunpowder with nitro-glycerine, and the other being for the mixture of rocket-powder with nitro- glycerine. It was not denied that these two patents were for the same inventions that were covered by the reissued pat- ent upon the surrender of which they were granted ; but it was claimed, by the defendant, that the inventions covered by them were unlike any inventions described or claimed in the original patent. To this the complainant argued in confes- sion and avoidance, claiming that the inventions covered by the last two reissues, were invented by Nobel, and were de- scribed and claimed in the original application, and that reis- sues can lawfully be granted for the same inventions so de- scribed, whether they are described in the specification of the original letters patent or not. The Supreme Court decided the case against the complainant, holding that reissues can only be granted for the same inventions that formed the subject-matter of the original patents ; and that the statute does not give any inventor a right to amend his patent, by the addition of other inventions, which though they might be his, had not been inserted in the application for his original patent, or if so inserted, had been eliminated therefrom. In a still later case evidence tending to show that the pat- entee, before obtaining his original patent, had invented everything covered by the reissue, was held to be immate- rial. 1 235. The claims of a reissue need not to be confined to the invention actually claimed in the original ; for it has been 1 Mfg. Co. v. Ladd, 102 U. 8. 413, 1880. CHAP. IX.] REISSUES. 169 expressly decided by the Supreme Court, that a patentee may in a reissue include in his claims whatever was described in the specification of his original letters patent. 1 In the case just cited, and also in an earlier Supreme Court opinion, 2 de- livered by the same justice of that tribunal, doctrine much broader than this was stated in obiter dicta. In that earlier opinion Justice CLIFFORD remarked, that : " Power is unques- tionably conferred upon the commissioner to allow the speci- fication to be amended if the patent is inoperative or invalid, and in that event to issue the patent in proper form ; and he may, doubtless, under that authority, allow the patentee to redescribe his invention and to include in the description and claims of the patent not only what was well described before but whatever else was suggested or substantially indicated in the specification or drawings, which properly belonged to the invention as actually made and perfected." In Marsh v. Sey- mour, Justice CLIFFORD repeated this obiter dictum, but re- peated it with an interpolation. He inserted after the word ''drawings" the words "or patent office model." The still later case of Powder Co. v. Powder Works 8 settled the inac- curacy of the last clause of the former dictum. 236. But the Supreme Court has never really decided whether an invention, shown only in the drawings of an orig- inal patent ; or an invention shown only in the original Pat- ent Office model, may be covered by the claims of a reissue. Those two questions are very important ones. They have no necessary connection with each other. One may be decided in the affirmative and the other in the negative, without vio- lence to any statute, or to the symmetry of the patent system. Upon few questions in the patent law do the books contain so much obiter dicta as upon these ; but disregarding all such extrajudicial utterances, let attention now be paid to those statutes and decisions which bear upon the two questions re- spectively. 1 Marsh v. Seymour, 97 U. S. 356, 516, 1870. 1877. 3 Powder Co. v. Powder Works, s Seymour v. Osborne, 11 Wallace, 98 U. S. 126, 1878. 170 KEISSUES. [CHAP. ix. 237. The statute provides that where the nature of the case admits of drawings, the applicant for letters patent shall furnish one copy, which shall be tiled in the Patent Office, and that a copy thereof shall be attached to the patent, as a part of the specification. 1 The drawings of all letters patent, issued since 1871, and containing drawings, are published in the Official Gazette of the Patent Office, by means of exact photolithographic reproductions ; and are similarly published in the certified copies of specifications and drawings of letters patents, which are distributed among the States, and among the Federal courts.* There seems therefore to be no reason why a claim in a reissued patent, may not as properly be based upon a representation in a drawing, as on a description in a specification. Several Circuit Courts have accordingly decided the question in that way, in cases where the fate of the suit de- pended upon that decision. 3 Judge H. B. BROWN has, in- deed, decided the point the other way, 4 but he did not sup- port that decision by any citation of authorities bearing directly upon the question, nor by any necessary logical de- duction from the cases which he did cite. 238. It is probable that no reissue claim was ever sus- tained in any case where the thing covered by it was neither referred to in the original specification, nor indicated in the original drawing, and was shown only in the original Patent Office model. The present text writer has made careful search through the reports, and has never found any report of such a case ; though he has found two cases in which the original model was considered in aid of the original specifica- tion ; * and has found one where the model was spoken of as agreeing with the drawings in showing the device in contro- versy ; * and has found several which contain obiter dicta to 1 Revised Statutes, Section 4889. 4 Kells v. McKenzie, 9 Fed. Rep. 9 Revised Statutes, Section 490. 284, 1881. 3 Bantz v. Elsas, 1 Bann. & Ard. s Aultman v. Holley, 11 Blatch. 351, 1874 ; Kerosene Lamp Heater 317, 1873 ; Reissner v. Anness, 3 Co. v. Littell, 3 Bann. & Ard. 312, Bann. & Ard. 148, 1877. 1878 ; Atwood v. Portland Co. 10 Calkins v. Bertraud, 2 Bann. 8r Fed. Rep. 286, 1880. Ard. 215, 1875. CHAP. IX.] REISSUES. 171 the effect that original models are proper foundations for reis- sued claims. Such passing remarks were, however, founded upon other obiter dicta, if founded upon anything, and are therefore of no more weight than the reasons which underlie them. The question whether a reissue claim can be based wholly on a Patent Office model, is therefore an open one ; and it is proper in this place to state the arguments that may be considered, when it is finally decided. Those arguments appear to fall naturally into the following classification. FIRST : It is an established rule of patent law, that where the court is able to say from a comparison of an original and a reissued patent, what are the inventions described in each, then the question of identity is one of pure construction, and consequently is matter of law for the court, without any aux- iliary matter to be passed upon by the jury, if the action be at law. 1 This rule is inconsistent with the idea that a valid reissued claim may be based on a thing shown only in the orig- inal model ; because the question as to what a model does or does not contain, is a pure question of fact. If reissued claims could be sustained on original models alone, the opinion of the court on the question of sameness of invention would never be conclusive in any case where a model was originally deposited in the Patent Office. In that event, there would still be an auxiliary matter of fact to be passed upon by the jury ; no matter how plainly the original and re- issued specifications appeared, on their face, to be for different inventions ; and no matter how exempt both specifications might be from terms of art calling for expert explanation. SECOND : The original model is furnished to the Commis- sioner of Patents ; * and becomes the property of the United States. It is not allowed to be taken from the Patent Office except in the custody of some sworn employe, specially author- ized by the Commissioner, with the written approval of the Secretary of the Interior. 3 No court could compel its pro- duction therein, against the will of the authorities of the Pat- 1 Heald v. Rice, 104 U. S. 737, * Revised Statutes. Section 4891. 1881. a Patent Office Rule 59. 172 BEISSUES. [CHAP. ix. ent Office. If Congress had intended that reissue claims should be sustained on models alone, it would therefore have made some provision for proving those models by certified copies. So far from doing so, Congress has always omitted models from the lists of things, belonging to the Patent Office, which according to the statutes are thus provable. 1 Certified copies of models have sometimes been made by the Commissioner, and used in evidence by consent ; but no such copy was ever admitted against the objection of counsel ; or if so admitted, it was admitted without authority of law. If reissue claims could be based on original models, therefore, it would seldom be possible for a defendant to technically prove that such a patent was for a different invention from any shown in such a model. The practical operation of such a rule, would be to make the Commissioner's decision conclusive on the question of sameness of invention, in many cases where an original model was filed, unless the patentee should please, by waiving all objections, to submit that question to the courts. It would often be in the power of one party to an action to take away from the courts a power which undoubtedly belongs to them ; the power to pass upon the validity of reissue patents, as against an objection of want of sameness of invention with the originals. THIRD : The public has ample opportunity of learning all the contents of drawings and specifications, by means of the copies which are contained in the widely distributed Patent Office Gazette, or of the printed certified copies which are to be found in every State capitol, and in many other places, or of the complete uncertified printed copies which are purchasable from the Commissioner of Patents for about ten cents each. But no person has any reliable means of learning the charac- teristics of the Patent Office models, except that of going to the Patent Office to inspect them, or sending an agent thither for that purpose. Indeed eighty-seven thousand 1 Patent Act of 1836, Sec. 4 ; Pat- Sec. 57 ; Revised Statutes, Section ent Act of 1837, Sec. 2 ; Patent Act 892. of 1861, Sec. 15 ; Patent Act of 1870, CHAP. IX.] REISSUES. . 173 of those original models no longer exist, having been de- stroyed in the Patent Office fire of 1877. To allow a reissue claim on a model alone, would operate as a surprise iipon per- sons who had no actual notice, and no fair constructive notice, of the contents of that model. It is true that such persons would not be liable to any action for accrued profits or dam- ages, on account of having made used or sold the subject- matter of such a reissue claim before it was granted ; but they would be liable to an injunction, restraining them from future making, using or selling of specimens of that thing, though it was not covered by any patent, or otherwise published, till after they had perhaps embarked their capital in machinery for making such specimens, or in such specimens themselves. FOURTH : To allow reissued claims to be based on models alone, would be to give an extensive opportunity to fraud. Specifications or drawings can never be surreptitiously changed without leaving ample means for certain detection. Thousands of exact copies thereof are made before the letters patent are issued ; and before the letters patent reach the patentees, hundreds of those copies are being transported in the mails throughout the United States. Patent Office models, on the contrary, are never duplicated, except in spe- cial cases ; and it is not practicable for the Commissioner to keep them in such close custody as to insure against fraudu- lent changes being made in their parts, or in the arrange- ment of those parts. FIFTH : On the other side of the question, it can truly be said, that the original model is sometimes more likely to be a perfect representation of the inventor's actual invention, than either the specification or the drawings. The answer to that suggestion is, that such is not always the fact, and that even if it were so, reissues are not granted for everything the in- ventor actually invented, and intended to patent. 1 They ought to be grantable only for those inventions, of the exist- ence of which the" inventor gave the public fair notice when he filed his original application ; and fair notice of an inven- 1 Powder Co. v. Powder Works, 98 U. S. 126, 1878. 174 REISSUES. [CHAP. DC. tion cannot be given to fifty millions of people, by simply de- positing a model in the Patent Office at Washington, where, if it is not destroyed by fire, it is likely to be broken by acci- dent or altered by dishonesty. 239. The last clause of Section 4916, of the Revised Stat- utes, provides, that " when there is neither model nor draw- ing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted 'from the specification by inadvertence, accident, or mistake." The meaning of that clause is not perfectly known ; but it is known not to enlarge the power of the Commissioner, in reference to the invention for which a reissue may be granted. That power is still restricted to the same invention that was originally patented. 1 That is to say, it is restricted to the same invention which was originally made manifest to the public in the specifications or drawings of the original letters patent. 240. The provision, first enacted in 1870, 9 that " no new matter shall be introduced into the specification" is merely another way of saying that a reissued patent shall be for the same invention as the original. 3 That provision, therefore, neither enlarged nor restricted the reissuability of letters patent ; and, accordingly, it is not new matter, within its meaning, to state a new use of the invention shown in the original ; 4 nor to explain, in a reissue, the operation of a de- vice which in the original was only described ; 6 nor to vary the description of anything described in the original ; ' nor to claim anything which was described in the original specifi- cation, 7 or shown in the original drawings. 8 1 Powder Co. v. Powder Works, & Ard. 243, 1876 ; Potter v. Stew- 98 U. S. 138, 1878. art, 18 Blatch. 661, 1881. 4 16 Statutes at Large, Ch. 230, 6 O'Reilly v. Morse, 15 Howard, Section 53, p. 206. 62, 1853. 8 Powder Co. v. Powder Works, ' Rubber Co. v. Goodyear, 9 Wal- 98 U. 8. 138, 1878. lace, 788, 1869 ; Powder Co. v. Pow- 4 Broadnax v. Transit Co. 5 Bann. der Works, 98 U. S. 136, 1878. & Ard. 611, 1880. 8 Bantz v. Elsas, 1 Bann. & Ard. * Putnam v. Yerrington, 2 Bann. 351, 1874 ; Kerosene Lamp Heater CHAP. IX.] REISSUES. 175 241. The rule, that whatever was described or shown in an original specification or drawing, may be claimed in a re- issue, is qualified by another rule, which provides that if the thing in question was disclaimed in the original, it cannot be claimed in any reissue thereof. ' Not only express disclaimers, but also disclaimers which are implied by the law, operate to foreclose a reissue for the thing disclaimed. Where, for in- stance, a specification states that a certain described device is in common use, no reissue claim can lawfully be allowed for that device ; * or where a specification described a contrivance which it characterizes as old and faulty, that contrivance can- not be made the subject of a valid reissue claim. 3 842. Reissued patents, which were granted on the sur- render of former reissues, must be able to endure comparison, on the point of identity of invention, not only with the orig- inal letters patent, but also with the surrendered reissues, which preceded them. 4 , 243. There is a legal presumption that the necessary iden- tity of invention exists in all reissued patents ; and that pre- sumption controls the point, unless the contrary is shown to be true." That can be done only by introducing the original let- ters patent in evidence ; ' and by showing the court, from a comparison of the original specification and drawings, with the description and claims of the reissue, that the former do not embody what is described and claimed in the latter. 7 If, on comparing a reissue with its original, the former appears on its face to be for a different invention from any described or in- dicated in the latter, that reissue is void. 8 244. To omit from a reissue, anything which the original Co. v. Littell, 3 Bann. & Ard. 312, Circuit Court Decisions, 106, 1840. 1878; Atwood u. Portland Co. 10 Fed. 8 O'Reilly v. Morse, 15 Howard, Kep. 286, 1880. 62, 1853 ; Klein v. Kussell, 19 Wal- 1 Leggett v. Avery, 101 U. S. 256, lace, 433, 1873. 1879. Seymour v. Osborne, 11 Wallace, 1 Edgarton v. Mfg. Co. 9 Fed. 516, 1870. Eep. 451, 1881. . ' Smith v. Dental Vulcanite Co. 3 Streit v. Lauter, 11 Fed. Rep. 93 U. S. 499, 1876. 309, 1882. 8 Ball v. Langles, 102 U. S. 130, 4 Knight v. Railroad Co. Taney's 1880. 176 REISSUES. [CHAP. ix. specification stated to be essential to the invention, is fatal to identity of invention. 1 Indeed, it has been held in one case that the omission of one bolt from a reissue patent for a reaper and mower, was enough to negative identity with the original, because with the bolt, the machine was a reaper only, and not a mower. 8 A process consisting of one stage, is not the same invention as a process consisting of that stage and one or more others.' Where, however, an original patent described and claimed several different inventions, one or more of those inventions may be omitted from the claims of a reissue of that patent. 4 It is necessary to the requisite identity of invention, that the reissue should claim no invention not described or shown in the original ; but it is not necessary to that identity, that the original should describe or claim no invention not de- scribed or shown in the reissue. 245. A sub-combination may be claimed in a reissue, if it was shown in the original as performing the same func- tion ; even though it was claimed in the original only as a part of a larger combination. 5 But a sub-combination cannot be legally claimed in a reissue, if it is there shown to perform a substantially different function from any which it could perform in its original environment. 8 In the former case the invention, consisting of the sub -combination, existed in the original specification. In the latter case, the sub- combination may have existed in the original, but it did not compose, in that place, the same invention which it constitutes in the re- issue. 1 Gill v. Wells, 22 Wallace, 1, Wallace, 181, 1874 ; Jordan v. Dob- 1874 ; Russell v. Dodge, 93 U. S. son, 4 Fisher, 232, 1870 ; Pearl v. 460, 1876 ; Atwood v. Portland Co. Ocean Mills, 2 Bann. & Ard. 469, 10 Fed. Eep. 286, 1880. 1877 ; Hen-ing v. Nelson, 3 Bann. * Northwestern Extinguisher Co. 1844. v. Philadelphia Extinguisher Co. 1 CHAP. XI.] TITLE. 211 Where there are several joint executors or administrators, the assignment or grant of one of them, is legally the assignment or grant of them all ; ' and if an administrator denominates himself an executor, or if an executor calls himself an adminis- trator, in such a document, that document will be none the less efficacious to convey the title which he holds in his true ca- pacity. 8 292. Tenancy in common, in a patent right, will arise whenever the sole owner of such a right, in all or in part of the territory of the United States, conveys to another an undi- vided interest in the whole or in part of the right which he owns. Mutual ownership of some sort arises when a plurality of persons are joint inventors of a process or thing, for which they obtain a joint patent ; and also when a plurality of persons obtain, by one assignment or grant, the undivided ownership of a patent, or the undivided ownership of a patent right in a part of the territory of the United States. Whether such mutual ownership constitutes tenancy in common, or constitutes joint-tenancy is a question upon which no positive answer can at present be given. The text writer can do no more than to state the considerations upon which each of the two possible answers, if given, must be based, and to state which of those Bets of considerations appear to be the more convincing. In favor of the hypothesis of joint-tenancy, it may be said that joint-tenancy is a doctrine of the common law which is as applicable to personal property as to real estate ; 3 and that such mutual ownership of patent rights, as those now under inspection, are characterized by all of the four unities which constitute joint-tenancy ; the unity of interest ; the unity of title ; the unity of time ; and the unity of possession. 4 la answer to this it may be said that the doctrine of survivorship is the distinguishing characteristic of joint-tenancy ; and that the reasons which gave rise to that description of estate in 1 Wintermute v. Kedington, 1 3 Blackstone, Book 2, Ch. 25, last Fisher, 239, 1856. paragraph. * Newell v. West, 13 Blatch. 114, 4 Blackstone, Book 2, Ch. 12. 1875. 212 TITLE. [CHAP. xi. England, never existed in the United States ; and that those reasons were founded on the feudal idea that the services due to the superior lord, should be kept entire ; and that the doc- trine of survivorship was invented to secure that feudal end ; and that it has no foundation on any principle of natural justice, or on any point of public policy relevant to American patent rights ; and that, therefore, joint-tenancy and its inci- dent, survivorship, are not such doctrines of the common law as are entitled to be incorporated into our American patent- system. To this argument against joint-tenancy, it may be replied that it has as reasonable an application to American patent rights, as it has to American real estate ; and that the Supreme Court of the United States has applied it to the latter sort of property. 1 To this it may be rejoined that though the question was involved, it was not argued, in the case last cited ; and that the Supreme Courts of several of the States have de- cided that joint-tenancy is not a part of American common law." And it may be further rejoined that even if applicable to American real estate, it is not applicable to American patent rights, because, if it were, it would often operate to defeat the reward to inventors which it is a purpose of American patent law to secure ; and because the same reasons which in England excluded the doctrines of joint-tenancy from personal property used in agriculture or in commerce, 3 should in America exclude those doctrines from personal property created by invention and used in manufactures. And it may be further rejoined that, even if, in the absence of contrary legislation, the doctrines of joint-tenancy would apply to American patent rights, yet those doctrines have been substantially abrogated throughout most of the United States, by means of those State statutes which have repealed or emasculated those doctrines within the several States, and by virtue of Section 721 of the Revised Statutes, which had adopted those State statutes. To the last re- 1 Mayburry v. Brien, 15 Peters, 37, Steinberger, 2 Ohio, 306, 1826 ; 1841. Harris v. Clark, 10 Ohio, 5, 1840. 8 Phelps v. Jepson, 1 Boot (Con- 3 Blackstone, Book 2, Ch. 25, last necticut), 48, 1769 ; Sergeant v. paragraph. CHAP. XI.] TITLE. 213 joinder it may be surrejoined that Section 721 of the Re- vised Statutes does not adopt the State statutes on this sub- ject ; because that section is identical with Section 34 of the Judiciary Act of 1789, and because the latter provision has been held by the Supreme Court, to apply only to cases arising out of the laws of the States. 1 To this surrejoinder, there may be a rebutter that this part of the decision in the United States v. Reid, has apparently been overruled in later Supreme Court cases." To the mind of the text writer it appears that those of the foregoing arguments which deny joint-tenancy in patent rights, are on the whole more convincing than those which affirm it. All mutual ownership of such rights, will therefore be treated in the following pages, as though it were, undeniably, tenancy in common. Inasmuch, however, as the question has never been decided by the Supreme Court, it would be prudent to avoid, as far as possible, the circumstances which created a joint-tenancy at English common law ; for if joint-tenancy should be held to exist in any patent right, its doctrine of survivorship would deprive the heirs or devisees of a dying joint-tenant, of their just inheritance, and would confer that inheritance upon the joint-tenant who survived. 3 293. The circumstances, which, unless avoided, may be held to create a joint-tenancy in a patent, can, where joint in- ventors become joint patentees, be avoided by means of a joint assignment of the patent to a third person, and a separate reassignment to the patentees, of their respective undivided interests. Such an operation will turn any joint-tenancy into a tenancy in common, because it destroys the unity of title, and if the separate reassignments are executed and delivered on different days, it also destroys the unity of time. Where a sole inventor sells an undivided interest in his invention or his patent, the objectionable circumstances can be avoided by sim- 1 United States v. Reid, 12 How- Black. 431, 1861 ; Wright v. Bales, ard, 363, 1851. 2 Black. 535, 1862. s Vance v. Campbell, 1 Black. 427, 3 Blackstone, Book 2, Ch. 25, last 1861 ; Haussknecht v. Claypool, 1 paragraph. 214: .TITLE. [CHAP. xi. ply assigning that undivided interest to the purchaser ; instead of doing the common, but unscientific, thing of assigning the whole invention, or the whole patent, to himself and to that purchaser jointly. And in a case where a sole patentee assigns his patent, or grants a territorial right therein, to a plurality of purchasers, those circumstances can be avoided by simply executing and delivering a separate paper to each purchaser for his undivided share ; instead of making one document con- vey the whole right to all the purchasers together. Indeed any device which will destroy either of the four unities of a joint-tenancy, will destroy that tenancy, and at the same in- stant will destroy the right of survivorship. If the unity of possession is destroyed, the ensuing estate of each owner is an estate in severally; but if that unity is preserved, while either or all of the others are destroyed, the joint-tenancy is converted into a tenancy in common.' 294. One tenant in common of a patent right may exercise that right to any extent he pleases without the consent of any co-tenant. He may make, use, and sell, specimens of the patented invention to any extent, and may license others to do so, and neither he nor his licensees can be enjoined from a con- tinuance in so doing." Nor can any recovery of profits or damages be had against any such licensee, at the suit of any co-tenant of any such licensor. 8 It seems to logically follow that no recovery of profits or damages can be had against one co-tenant, who, without the consent of the others, has made, used or sold specimens of the patented thing. That doctrine has however been denied by one federal judge ; * and doubted by another ; * though it has been enforced by a third, 8 and by the Supreme Court of Massachusetts ; 7 and by the Supreme Court of New York. 8 Either one of several co-tenants in a 1 Blackstone, Book 2, Ch. 12. 223, 1876. 9 Chun v. Brewer, 2 Curtis, 523, 6 Whiting v. Graves, 3 Bann. &Ard. 1855. 225, 1878. 3 Dunham w. Railroad Co. 7 Bissell, 7 Vose v. Singer, 4 Allen, (Mass.) 223, 1876. 232, 1862. * Pitts v. Hall, 3 Blatch. 207, 1854. De Witt v. Mfg. Co. 5 Hun, 6 Dunham v . Railroad Co. 7 Bissell, (N. Y.) 301, 1875. CHAP. XI.] TITLE. 215 patent right, may of course sell his right independently of the others ; ' but where joint trustees are appointed to hold the legal title to a patent, and to manage it according to their mutual judgment and discretion, a joint deed of all those trus- tees is necessary to convey that right to another. 2 295. Partition of a patent right, held by tenancy in common, may of course be made by the common consent and mutual action of all the owners of that right ; but no such partition can be made against the will of either owner. This rule follows from the fact that' no partition of estates held by tenancy in common was compellable at common law ; 3 and from the fact that no United States statute has provided for any such partition ; and from the fact that the State statutes relevant to partition of real estate do not apply even to personal property which is held under the laws of the States, and surely cannot apply to any personal property which is created by the laws of the nation. 1 May v. Chaffee, 2 Dillon, 388, 11 Fed. Rep. 302, 1882. 1871. 3 Blackstone, Book 2, Ch. 12. s Wiscott v. Agricultural Works, CHAPTEK XII. LICENSES. 296. Licenses defined and described. 297. Express licenses to make, with implied leave to use, or implied leave to sell the things made. 298. Express licenses to use, -with implied leave to make for use. 299. Express licenses to sell, with implied leave to the vendees to use and to sell the things they purchase. 300. Licenses to make and use, with- out implied leave to sell. 301. Licenses to make and sell, or to use and sell, with implied leave to the vendees to use and to sell the articles they buy. 302. Express licenses so restricted as not to convey implied rights. 303. Written and oral licenses. 304. Recording and notice. 305. Licenses given by one of sev- eral owners in common, and li- censes given to one of several joint users. 306. Construction of licenses. 307. Warranty and eviction. 308. Clauses of forfeiture. 309. Effects of forfeiture. 310. Assignability of licenses. 311. Purely implied licenses. 312. Implied licenses from conduct, and first by acquiescence. 313. Implied license from conduct by estoppel. 314. Implied license from actual re- covery of damages or profits. 296. ANY conveyance of a right under a patent, which does not amount to an assignment or to a grant, is a license. It is a license, if it does not convey the entire and unqualified mo- nopoly, or an undivided interest therein, throughout the par- ticular territory to which it refers. 1 Consistently with this definition, the following have been held to constitute licenses only : an exclusive right to make and sell, but not to use : a an exclusive right to make and use, but not to sell : ' an ex- 1 Gayler v. Wilder, 10 Howard, 494, 1850 ; Sanford v. Messer, 1 Holmes, 149, 1872 ; Hill u.Whitcornb, 1 Holmes, 321, 1874. * Hayward v. Andrews, 106 U. 8. 673, 1882 ; Dorsey Rake Co. v. Mfg. Co. 12 Blatch. 203, 1874. 8 Mitchell v. Hawley, 16 Wallace, 544, 1872. CHAP. XII.] LICENSES. 217 elusive right to use and sell, but not to make : ' an exclusive right to make, to use, and to sell to be used, for certain pur- poses, but for no other. 2 " The right to manufacture, the right to sell, and the right to use, are each substantive rights, and may be granted or conferred separately by the paten- tee." 3 Any one or two of these rights may be expressly con- veyed by a patentee, while the other is expressly retained by him. In the absence of express reservation, however, some licenses are extended by implication, so as to convey, not only what they expressly cover, but also some other right which is necessary to the full enjoyment of the right expressly con- veyed. This doctrine is not in conflict with the rule which prohibits the enlargement of an instrument in writing by parol evidence ; because that rule is directed only against the admis- sion of oral evidence of the language, used by the parties in a contract which was reduced to writing. 4 This doctrine relates to the legal effect of the language actually written, and is based on that maxim of the common law which prescribes, that any one granting a thing, impliedly grants that, without which, the thing expressly granted would be useless to the grantee. 5 297. An express license to make specimens of a patented thing, is without value, unless it implies a right to use, or a right to sell, the specimens made thereunder. It is not to be presumed that a right so nugatory as a bare right to make, was the only subject of a license for which a valuable consideration was paid. Whether the implied right, which accompanies such a license, is a right to use or a right to sell, can best be determined by ascertaining the circumstances which surrounded the giving of the particular license in question. If the licensee was engaged in a business which made it convenient for him to use the thing involved, then the right to use will be implied in preference to the right to sell, because it is the more natural 1 Hamilton v. Kingsbury, 17 1873. Blatch. 265, 1879. 4 Greenleaf on Evidence, Section 4 Gamewell Telegraph Co. v 277. Brooklyn, 14 Fed. Hep. 255, 1882. 6 Steam Stone Cutter Co. v. Short- 3 Adams v. Burke, 17 Wallace, 456, sleevea, 16 Blatch. 382, 1879. 218 LICENSES. [CHAP. xii. implication in such a case. On the other hand, if the licensee had no occasion to use the thing in view, but was engaged in making and selling similar things, for the use of others, then a right to sell will be implied from a right to make. ' Rights to both use and sell will not be implied from an express license to make, because only one of those rights is necessary to the bene- ficial enjoyment of such a license. An express license to make specimens of a particular thing does not impjy a license to use a particular patented machine for that purpose, even where the patent on that machine was owned by the licensor, at the time of the license, and even where that machine was then the best-known means of making the thing licensed." 298. An express license to use a limited or unlimited number of specimens of a patented article, implies a right to make those specimens, and to employ others to make them, and will protect those others in making them for the use of the licensee. 3 If the license to use, covers a greater length of time than one specimen of the thing to be used will last ; then there is an implied right in the licensee to repair or to rebuild that specimen, or to replace it by another specimen made or purchased for that purpose. 4 299. An express license to sell specimens of a patented thing, does not imply any right to make those specimens, because it is to be presumed that they may be obtained by purchase, and because no person requires any license to enable him to lawfully buy an article covered by any patent. But a license to sell does imply that a right to use and to sell again shall be conferred on the vendees of the licensee, for otherwise no persons would buy except for exportation, and sales for exportation are seldom sufficiently practicable to raise a pre- sumption that they alone were contemplated by the parties to a license to sell. 1 Steam Cutter Co. v. Sheldon, 10 4 Wilson v. Stolley, 4 McLean, 275, Blatch. 8, 1872. 1847 ; Bicknell v. Todd, 5 McLean, * Troy Nail Factory v. Corning, 14 236, 1851 ; Woodworth v. Curtis, 2 Howard, 193, 1852. Woodbury & Minot, 524, 1847 ; Steam 3 Steam Stone Cutter Co. v. Short- Cutter Co. u. Sneldon, 10 Blatch. 8, sleeves, 16 Blatch. 381, 1879. 1872. CHAP. XII.] LICENSES. 219 300. A license to make and use does not authorize any sale of the thing so made, nor authorize any purchaser of that thing to use the same. 1 Nor does a sale, coupled with an ex- press license to use. give any right to use after the license has been forfeited. 2 The purchaser of a patented thing gets no other right to use it than such right as the seller had an ex- press or an implied right to convey. 3 And the purchaser of a thing which is useful only in producing a patented article, gets thereby no right to use his purchased thing for that pur- pose. 4 301. A license to make and sell, or a license to use and sell, implies a right in the purchaser to use, and to sell again, the thing thus lawfully sold to him. When a specimen of a patented invention is sold with the authority of the owner of the patent which covers it, and without any restriction on the ownership or use of the thing conveyed, then that specimen passes out of the exclusive right which is secured by the patent, and may be used as long, or sold as often, as though it had never been subject to a patent. 5 The same result also follows from a sheriff's sale of a patented article, where that sale was made in pursuance of an execution, issued against the owner of the patent right, and lawfully levied on that article, as the property of that owner.' But no person acquiring the owner- ship of mutilated portions of a specimen of a patented thing, can lawfully reconstruct that specimen by adding the missing parts, and still less can he lawfully use or sell the entire article when reconstructed. 7 302. Express licenses which, if unrestricted, would convey 1 Wilson v. Stolley, 4 McLean, 277, Co. 22 Howard, 217, 1859 ; Adama 1847. v. Burke, 17 Wallace, 453, 1873 ; Pa- 8 Wortendyke v. White, 2 Bann. & per-Bag Cases, 105 U. S. 771, 1881 ; Ard. 25, 1875. McKay v. Wooster, 2 Sawyer, 373, 3 Chambers v. Smith, 5 Fisher, 14, 1873 ; May v. Chaffee, 2 Dillon, 385, 1870. 1871 ; Detweiler v. Voege, 8 Fed. 4 Stevens v. Cady, 14 Howard, 528, Rep. 600, 1881. 1852 ; Stevens v. Gladding, 17 How- Wilder v. Kent, 15 Fed. Eep. ard, 447, 1854. 217, 1883. 6 Bloomer v. McQnewaji, 14 How- ' American Cotton Tie Co. v. Si- ard, 539, 1852 ; Chaffee v. Belting rnons, 106 U. S. 89, 1882. 220 LICENSES. [CHAP. xn. implied rights, may be so restricted that they will not have that effect. 1 A license to make and sell may be so restricted that the things made and sold under it cannot be lawfully used in certain specified parts of the United States ; or so restricted that the licensee cannot make and sell the patented thing any- where in the United States, with intent to have it exported to a foreign country. 8 A license to use and sell may likewise be restricted in the same way. A license to make and use may be so restricted that the patented thing cannot be used in certain specified parts of the United States, 8 and cannot be used anywhere in the United States, during certain specified spaces of time. 4 303. Licenses may be written, or they may be oral. The former have no advantage over the latter, except that they can usually be proven with more ease and more certainty, and ex- cept that the latter may sometimes be invalid because obnox- ious to some statute of frauds. Those exceptions, however, constitute an abundant reason for embodying all such con- tracts in plain black and white documents, rather than com- mitting them to the " slippery memory of man." 304. No license is required to be recorded, 5 and no record of a license affects the rights of any person ; for a license is good against the world, whether it is recorded or not. 7 So also, if a license is embodied in two papers, one of which limits the scope of the other, an assignee of the broader document will take subject to the limitations of the narrower, even if he had no notice of its provisions, or even of its exist- ence. Nor will the fact that the broader document was re- corded, and the narrower one unrecorded, alter or affect the 1 Hamilton v. Kingsbury, 15 6 Brooks v. Byam, 2 Story, 525, Blatch. 64, 1878 ; Hamilton v. Kings- 1843 ; Consolidated Fruit Jar Co. v. bury, 17 Blatch. 264, 1879. Whitney, 2 Bann. & Ard. 38, 1875 ; 8 Dorsey Bake Co. v. Mfg. Co. 12 Buss v. Putney, 38 N. H. 44, 1859. Blatch. 204, 1874. Chambers v. Smith, 5 Fisher, 14, Wicke v. Kleinkneoht, 1 Bann. & 1870. Ard. 608. 1874. ' Farrington v. Gregory, 4 Fisher, 4 Mitchell v. Hawley, 16 Wallace, 221, 1870. , 1872, CHAP. XH.J LICENSES. 221 operation of this rule. 1 It follows, that where two licenses conflict, the first must prevail even though the taker of the second, had no notice of the existence of the first ; and it also follows that any license will prevail as against the claims of any subsequent assignee or grantee of the patent right in- volved. 9 305. A license from one of several owners in common of a patent right, is as good as if given by all those owners ; * and a license given to one of several joint makers or users of a patented thing is as good as if given to all, if the licensor gives it with the understanding that the thing licensed to be done is to be done jointly, or is to be done by the express licensee on behalf of the other party." 306. The construction of a license in writing, depends upon the same general rules as the construction of other written contracts. 5 For example, it is to be construed in the light of the circumstances which surrounded its execution.* Accordingly, where the owner of several patents licenses a person to make, use or sell a particular class of things which, if made, used or sold without a license, would infringe all those patents, then that license confers a right under them all. 7 307. No warranty of validity of the letters patent is implied in any license given thereunder, and unattended proof of invalidity is therefore no defence to any suit for promised royalties. 8 As long as a licensee continues to enjoy the benefit of the exclusive right, he must pay the royalty which he promised to pay, and he cannot escape from so 1 Hamilton v. Kingsbury, 17 6 Burdell v. Denig, 92 U. S. 722. Blatch. 264 and 460, 1880. 1875. 2 Continental Windmill Co. v. Em- 7 Day v. Stellman, 1 Fisher, 487, pire Windmill Co. 8 Blatch. 295, 1859. 1871. * Birdsall v. Perego, 5 Blatch. 251, 3 Dunham v. Eailroad Co. 7 Bis- 1865 ; Sargent v. Larned, 2 Curtis, sell, 224, 1876. 340, 1855 ; Marsh v. Dodge, 4 Hun, 4 Bigelow v. Louisville, 3 Fisher, (N. Y.) 278, 1875 ; Bartlett v. Hol- 603, 1869. brook. 1 Gray (Mass.), 118, 1854 ; 5 Witherell v. Zinc Co. 6 Fisher, Marston v. Sweet, 66 N. Y., 207, 50, 1872. 1876. LICENSES. [CHAP. xn. doing by offering to prove the patent to be void. 1 But a license does imply that the licensee shall not be evicted from its enjoyment, and such an eviction is a defence to a suit for royalties accruing after it occurred." Such an eviction occurs whenever the patent is adjudged void in an interference suit prosecuted in equity in pursuance of Section 4918 of the Revised Statutes. In one case it was held that such an eviction occurs whenever the Patent Office decides against the patent, in an interference between it and an application filed after it was granted. 3 That holding was wrong, because it was based on the statement that the decision of the Patent Office, in the interference case, rendered the un- successful patent void. That statement was entirely errone- ous ; for that result can only be obtained by an action in equity under Section 4918 of the Revised Statutes. 4 The decision of the New York Court of Appeals in Peck v. Col- lins,* was cited as the authority for that statement ; but on turn- ing to Peck v. Collins, we find that it was the surrender of the patent that annulled it, and the Supreme Court of the United States so decided, when the case reached that tribunal. 8 Such eviction will also occur, whenever the patent is repealed, by the decree of a court in which an action is brought by the United States for that purpose. This statement is ventured on the analogy of what was meant to be decided in the case of Marston v. Swett ; namely, that a licensee is evicted from the enjoyment of his license whenever the patent is judicially an- nulled. Such eviction also occurs, whenever the licensee is en- joined from acting under it, at the suit of the owner of a senior patent ; T and by parity of reasoning, it occurs whenever a judgment or decree is obtained by the owner of a senior 1 Burr v. Dnryee, 2 Fisher, 285, Book Sewing Machine Co. v. Steven- 1862. son, 11 Fed. Hep. 155, 1882. 1 White v. Lee, 14 Fed. Rep. 791, Pecku. Collins, 70N.Y. 376, 1877. 1882. Peck v. Collins, 103 U. S. 664, 1 Marston v. Sweet, 82 N. Y. 526, J880. 1880. i Pacific Iron Works v. Newhall, * Union Paper-Bag Machine Co. v. 34 Connecticut, 67, 1867. Crane, 1 Holmes, 429, 1874 ; Wire CHAP. XII.] LICENSES. patent, against the licensee for an infringement which con- sisted of acting under the license. Such an eviction will also probably be held to occur whenever the patent is defied by unlicensed persons, so extensively and so successfully as to deprive the licensee of the benefit of his share in the exclusive right which it was supposed to secure. 308. Forfeiture of a license does not follow from the single fact that the licensee has broken some covenant which was made by him when accepting the license ; unless the parties expressly agreed that such a forfeiture should follow such a breach. 1 And even where such an agreement is made, it will not always be enforced. For example, non-payment of royalty on the very day it becomes due, will not work a forfeiture, if that non-payment arose from lack of certainty relevant to the place of payment, and from lack of demand from the licensor." Nor will forfeiture of a license result from the fact that the licensee has infringed the patent by doing acts, with the inven- tion, which were unauthorized by the license. The license will not protect him in such doings, but it will continue to protect him in doing the acts which it did authorize. 3 Indeed forfeitures are not favored by the law ; and courts are always prompt to seize upon any circumstance which indicates an agreement or an election to waive one.* 309. Where a license is really forfeited, and the licensee continues to work under it as though it were still in force, the licensor has an option to sue him as an infringer, or to sue him for the promised royalties. 4 If he selects the first of these remedies, the infringer may generally interpose any defence that he could have set up in the absence of a license.' If there is an exception to this rule, that exception exists where 1 White v. Lee, 5 Bann. & Ard. 572, 5 Woodworth v. "Weed, 1 Blatch. 1880. 166, 1846 ; Cohn v. Kubber Co. 3 2 Dare v. Boylston, 6 Fed. Rep. Bann. & Ard. 572, 1878 ; Union Mfg. 493, 1880. Co. v. Lounsbury, 42 Barbour, (N. Y.) 3 Wood v. Wells, 6 Fisher, 383, 125, 1864. 1873 ; Steam Cutter Co. v. Sheldon, Woodworth v. Cook, 2 Blatch. 10 Blatch. 1, 1872. 160, 1850 ; Burr v. Duryee, 2 Fisher, 4 Insurance Co. v. Eggleston, 96 283, 1862. U. 8. 572, 1877. 224 LICENSES. . [CHAP. xn. the license contained an agreement on the part of the licensee not to contest the validity of the patent. Whether or not there is such an exception to the general rule, has never yet been settled, though it is likely to be decided at an early day. 1 The question seems to be whether a forfeited contract is bind- ing upon the party that suffered the forfeiture ; and if so, whether a party can make a valid contract to omit a legal defence when brought into court in response to the suit of another party. 310. No license is assignable by the licensee to another, unless it contains words which show that it was intended to be assignable." The most suitable phrase with which to express such an intention, would include the word " assigns ;" but in one case it was held that the words " legal representatives" would answer the purpose, because the license fairly indicated that the parties understood that phrase to include " assigns" as well as ' ' executors or administrators. ' ' 3 But even unas- signable licenses may sometimes be invoked by persons who are not exactly identical with the licensees. A railroad com- pany which was formed by the consolidation of prior railroad companies, may invoke the licenses which were given to either of its constituent corporations ; because the consolidated com- pany is a successor rather than an assignee of those companies. 4 So also, a license to a corporation, will protect a receiver who is authorized to manage its business during its embarrass- ments.* "Where a license is given to a partnership, composed of several persons, and where that partnership is dissolved, and its business is continued by one of the partners, that part- ner is entitled to that license ; ' but a license to one person gives no right to any partner of that person ; and if it author- 1 Wooater v. Mfg. Co. 23 Off. Gaz. a Hamilton v. Kingsbury, 15 2513, 1883. Blatch. 69, 1878. Troy Factory v. Corning, 14 How- < Lightner v. Railroad Co. 1 Low- ard, 193, 1852 ; Rubber Co. v. Good- ell, 338, 1869. year, 9 Wallace. 788, 1869 ; Baldwin 6 Emigh v. Chamberlin, 2 Fisher, v. Sibley, 1 Clifford, 150, 1858 ; Searls 192, 1861. v. Bonton, 12 Fed. Rep. 143, 1882 ; Belding v. Turner, 8 Blatch. 321, Bull v. Pratt, 1 Connecticut, 342, 1871. 1815. CHAP. XII.] LICENSES. 225 izes the licensee to act only at a particular place, it will not protect any doings of his elsewhere. 1 The non-assignability of a license, may be waived by the licensor, and will be so waived if he accepts the promised royalty from the assignee of the licensee ; * or ratifies the transfer of the licenpe, by otherwise treating the assignee as the licensee was entitled to be treated. 8 Assignable licenses are assignable only in their entirety, unless they expressly authorize their assignment in parts, and to a plurality of persons. 4 The purchaser of a license, takes it subject to all the restrictions connected therewith, whether he has notice of those restrictions or not ; 6 and subject to liability for the same rate of royalty for his doings, that the licensee would have had to pay for similar acts ; but not sub- ject to any royalty, or other money, due from the licensee to the licensor, at the time of the assignment of the license. 8 311. Purely implied licenses may arise from the conduct of patentees and grantees of patents, or from recoveries by them, of profits or damages for certain classes of infringe- ments. Many of the rules which have thus far in this chap- ter, been stated and explained in connection with purely ex- press licenses, and in connection with express licenses having implied incidents ; are also applicable to licenses which are purely implied. Little or nothing remains to be said about the latter, except to state the classes of circumstances out of which they are found to spring. 312. Implied licenses, from conduct of owners of patent rights, may arise out of any one of a considerable number of classes of facts ; but, when analyzed, those facts will probably always be found to thus operate by virtue of the doctrines of acquiescence, or the doctrines of estoppel. Where the owner of a patent right acquiesces in the doings of one who 1 Rubber Co. v. Goodyear, 9 Wai- 1843. Consolidated Fruit Jar Co. v. lace, 788, 1869. Whitney, 1 Bann. & Ard. 356, 1874. 8 Bloomer v. Gilpin, 4 Fisher, 55, 6 Chambers v. Smith, 5 Fisher, 12, 1859. 1870. 3 Hammond v. Organ Co. 92 TJ. S. 6 Goodyear u. Rubber Co. 3 Blatch. 724, 1875. 449, 1856. 4 Brooks v. Byam, 2 Story, 545, 226 LICENSES. [CHAP. xn. makes, uses or sells specimens of the patented invention, and where that owner also accepts partial compensation for such doings, a license will be implied unless the case also presents other facts which negative such an implication. 1 Payment of full compensation would be a still more convincing ground upon which to base an implied license ; and such a license may be based on a clear case of acquiescence, even if no payment whatever is proven to have as yet been actually received. But acquiescence in unpaid-for use, does not always imply that no compensation is to be expected. Where the user knew of the patent, and the patentee knew of the use, and did not object thereto ; it is more reasonable to im- ply an agreement for a quantum, meruit, than to imply that the patentee donated the use of his invention to the user, or to imply that the user unlawfully seized upon the invention of the patentee. 8 But acquiescence cannot exist without knowledge of the thing acquiesced in, nor can it be predicated even of knowledge and omission to interfere with the doings of the infringer, if that omission is fairly accounted for on other grounds. 313. The estoppel which will work an implied license is that sort which is most accurately denominated estoppel by conduct ; and all of the following elements are necessary to its existence. 1. There must have been a representation or a concealment of material facts. 2. The representation must have been made with knowledge of the facts. 3. The party to whom it was made must have been ignorant of the truth of the matter. 4. It must have been made with the intention that the other party should act upon it. 5. The other party must have been induced to act upon it. 8 6. That act must be hurtful to the party acting, in case the estoppel is not enforced in his favor. 4 i Blanchard v. Sprague, 1 Clif. 297, 18, p. 437. 1859. ' Railroad Co. v. Duboise, 12 Wal- 1 McKeever v. United States, 23 lace, 64, 1870 ; Hill v. Epley, 31 Penn. Off. Gaz. 1527, 1883. State, 334, 1858 ; Dezell v. Odell, 3 'M'Millin v. Barclay, 5 Fisher, Hill (N. Y.), 215, 1842 ; Patterson v. 201, 1871 ; Bigelow on Estoppel, Ch. Lyttle, 11 Penn. State, 53, 1849. CHAP, xn.] LICENSES. 227 If the owner of a patent right were to explain the patented invention to a person ignorant of the patent ; and were to advise him to make, to use, or to sell a specimen of that invention, with intent to induce him to infringe the patent un- knowingly ; and if that person were thereby induced to incur expense in infringing or in preparing to infringe that patent, then it would follow from these doctrines of estoppel, that an implied license would result to a person thus misled. The same result would follow, if the owner of a patent right were to conceal the existence of the patent from a person who, to his knowledge, was about to infringe it unknowingly ; if that concealment were done with intent to allow that person to infringe ; and if that person incurred expense in infringing or in preparing to infringe, which he would not have incurred if he had known of the patent. So also, where a person sells a patented machine to another without having any interest in or under the patent, he will be estopped from prosecuting his ven- dee for infringement on the basis of any after acquired title. 314. An actual recovery of money in an infringement suit for unlicensed making and selling a specimen of a patented thing, operates as an implied license to the purchaser of that specimen, to use it to the same extent that he could lawfully have done, if the infringer had been licensed to make it and to sell it. 1 But to effect such a result, something more than a judgment or decree is necessary. There must be a satisfac- tion of that decree or judgment. 5 Recoveries based on unlicensed use of a patented process or thing, are necessarily confined to such use as occurred before the suit was brought, if the action be at law, or to such as occurred before the final decree, if the action is in equity ; and it therefore follows that no such recovery can operate to license any one to con- tinue such use, or to begin a new use of that thing or that process. 8 1 Spaulding v. Page, 1 Sawyer, 709, 1140, 1881. 1871 ; Perrigo v. Spaulding, 13 * Gilbert and Barker Mfg. Co. v. Blatch. 391, 1876 ; Steam Stone Cut- Bussing. 12 Blatch. 426, 1875. ter Co. v. Mfg. Co. 17 Blatch. 31, a Suffolk Co. v. Hayden, 3 Wallace, 1879 ; Booth v. Seevers, 19 Off. Gaz. 315, 1865. CHAPTER XIII. INTERFERING PATENTS. 315. Causes and characteristics of I Commissioner of Patents on a interfering patents. 316. Actions in equity between inter- fering patents. 317. The proper issue in such ac- tions. 318. The force of the decision of the prior interference in the Patent- Office. 319. Injunctions in interference ac- tions. 320. The proper decrees in snch actions. 315. PATENTS which contain one or more claims in common, are interfering patents. All but one of several such patents are necessarily void, as to the interfering claim or claims ; though all may be valid as to the other claims which they respectively contain. ' There are two causes which lead to the granting of interfering claims. Such claims may be granted because of inadvertence or erroneous judgment on the part of the Patent Office ; and they may be granted because applica- tions do not always happen to be made in the order of inven- tion. The first cause may operate when the Patent Office examiners overlook an anticipating patent, while examining an application in point of novelty ; or when they form an erroneous opinion that an existing patented claim is substan- tially different from the claim under immediate inspection. The second cause may operate when one person who is an original, but not the first, inventor of a particular thing, applies for and receives a patent thereon, before another person, who is an original and the first inventor of that thing, files his application in the Patent Office. Under such circum- stances, it is the duty of the Commissioner to declare an inter- ference between the patent and the unpatented application, 1 Gold and Silver Ore Co. v. Disintegrating Ore Co. 6 Blatch. 311, 1869. CHAP. Xin.] INTERFERING PATENTS. 229 and if, in that interference proceeding, the later applicant is adjudged to be the prior inventor, and if the application is otherwise unobjectionable, it becomes the duty of the Commissioner to grant him a patent. 1 The Commissioner has however no authority to recall the patent theretofore granted to the wrong party. That patent can be set aside by the courts alone. 316. A suit in equity is the prescribed proceeding by means of which the interfering claims of two or more patents may be adjudicated upon, in point of comparative novelty. 1 The complainant in such a suit may be the patentee or assignee of either of the interfering patents, or a grantee or licensee thereunder ; for all of these persons fall within the category mentioned in the statute : a category which includes every person interested in any one of the patents, or in the working of the invention claimed under any of them. The defendant may be any patentee, assignee or grantee who owns an interest in another of the interfering patents ; for all such persons are " owners" thereof. It is neither necessary that all the possible complainants should join in a suit, nor that all the possible defendants should be brought before the court. The statute provides that no decree entered in such a suit shall affect either patent, except so far as the patent affected is owned by parties to the suit, or by persons deriving title under them after the rendition of such decree. The proper practice is to make all persons complainants who have a right, and who are willing, to be so made ; and to make all persons defendants who are liable to be made so, and who reside or may be found in the district where the suit is brought. No person who neither resides nor is found in that district can be made a party defendant to a suit of this kind, any more than to any other equity suit in a Federal court. 3 A bill cannot be filed in an interference suit, until the com- plainant's patent is actually granted ; 4 and until the defend- 1 Revised Statutes, Section 4904. Miller, 1 McCrary, 31, 1880. * Revised Statutes, Section 4918. 4 Hoeltge v. Hoeller, 2 Bond, 388, * Liggett & Myers Tobacco Co. v. 1870. 230 INTERFERING PATENTS. [CHAP. ant's patent is actually granted, there is no occasion for such a bill. No cross-bill is either necessary or proper in a suit of this kind, because the statute provides that in such a suit, the court may adjudge either of the patents to be void. The de- fendant may therefore obtain all rightful affirmative relief without becoming himself a complainant in a cross-bill.' 317. There is but one issue of fact in an interference suit. That issue relates to the dates wherein the interfering matter was respectively invented by the interfering inventors. If the complainant's invention is the older, the defendant's interfering claim is void for want of novelty. And the com- plainant's interfering claim is void for want of novelty, if the defendant's invention is found to antedate the other. Evidence that a third person anticipated both inven- tors, is not admissible in an interference suit ; because such evidence is not relevant to any decree the court has jurisdic- tion to make in such a case. Such evidence, if acted upon, would result in a decree voiding both patents. The statute authorizes a decree voiding either patent, but authorizes none voiding both. A decree voiding one, is not a decree implied- ly validating the other. Such a decree leaves the successful patent open to every possible objection save want of novelty ; and leaves it open to every possible objection of want of novelty, save such as might otherwise have been based on the existence of the unsuccessful patent ; and leaves it open also to that objection, as between all persons, except the parties to the interference suit and their privies. If a defendant in an interference suit may attack the complainant's patent on the ground that a third person anticipated the complainant's invention, he may, with equal propriety attack it on any or all of the numerous other grounds upon which patents may be attacked in point of validity. To suppose that the statute of interference suits authorizes any such extended litigation, is apparently to misapprehend its purpose and misconstrue its language. These views are ventured, notwithstanding one district judge has decided the point in the opposite direction. 1 1 Lockwood v. Cleaveland, 6 Fed. * Foster v. Lindsay, 3 Dillon, 126, Kep. 721, 1881. 1875. CHAP. XIII.] INTERFERING PATENTS. 231 318. The evidence upon which interference suits are de- cided, consists of the best evidence on the question in is- sue. On this question the Commissioner's decision is pinma facie evidence in favor of the patent last granted ; because he would not have granted it if he had not decided it to be entitled to priority in point of date of invention. l The Com- missioner's decision is not conclusive ; because, if it were, the court would have no function but to enforce that decision ; and because, if it were conclusive in law, it would bind nobody but the senior patentee. In such a case the operation of a decree based on a Commissioner's decision, if wrong in fact, would be to deprive a patentee of all right to make, use or sell the thing which he was the first to invent and the first to patent ; and to throw that invention open to all the residue of the world.* 319. Injunctions are not expressly authorized by the statute which provides for interference suits. Justice N ELSON once decided that a preliminary injunction could be granted in such a case on the ground that ' ' the power conferred upon the 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 jurisdiction." 3 Justice BLATCHFOED was of counsel for defend- ant in that case, and was its reporter ; but when he came to the bench he declined to follow the precedent, saying, " I am not aware of any principle which would authorize the Court, in a suit of this character, to restrain a defendant from bring- ing suits on his patent, before that patent is adjudged to be invalid." Of course Justice BLATCHFORD was aware of what Justice NELSON had decided. He must therefore have held that the reason Justice NELSON gave was not a good one ; unless there is a substantial difference between the forms of injunction asked for in the two cases. The injunction prayed before Justice NELSON was that the defendant be restrained 1 Wire Book Sewing Machine Co. 8 Potter v. Dixon, 5 Blatch. 165. v. Stevenson, 11 Fed. Rep. 155, 1882. 1863. s Union Paper-Bag Machine Co. v. 4 Asbestos Felting Co. v. Salaman- Crane, 1 Holmes, 429, 1874. der Felting Co. 13 Blatch. 454, 1876. 232 INTERFERING PATENTS. [CHAP. XIII. from using or selling liis interfering patent ; and the injunc- tion prayed in the other case was that the defendant be restrained from bringing suits upon his interfering patent. In both cases the thing sought to be enjoined was an attempted enjoyment of the patented right. The two decisions seem therefore to be in conflict, and the law upon the point cannot be said to be settled. 320. The hearing of an interference case may disclose that there is no interference between the patents before the court ; or that there is such an interference. In the former event, the proper decree to enter is one dismissing the com- plainant's bill ; and in the latter event, the proper decree is one adjudging the patent issued on the later of the inventions, to be void, so far as it secures the interfering matter, and so far as the title of the parties to the suit extends. 1 Such a decree should be entered regardless of whether the patent to be voided is that of the defendant or that of the complainant. If it is the latter, a decree merely dismissing the complain- ant's bill will not answer the purpose ; because such a decree does not necessarily involve any such conclusion. 8 It may mean only that there is no interference ; or it may merely mean that the complainant has no proper title to the patent which he invokes. 1 Gilmore v. Golay, 3 Fisher, 522, * Tyler v. Hyde, 2 Blatch. 310, 1869 ; Sturges v. Van Hagen, 6 1851. Fisher, 572, 1873. CHAPTER XIV. REPEAL OF PATENTS. 321. Patents obtained by fraud, or granted by mistake. 322. Jurisdiction of equity to repeal patents so obtained or so grant- ed. 323. Practice in such cases. 321. PATENTS and reissues may sometimes be obtained by fraud ; and sometimes be granted by mistake. The facts which constitute the fraud, or which make the granting a mistaken one, may generally be interposed as one of the defences to an infringement suit ; but where those facts are such that no one of those defences can be based upon them, they cannot be interposed merely because they constitute a fraud, 1 or constitute a mistake. 2 Nor can any individual bring any action to repeal or otherwise set aside a patent, on any ground of fraud ; or indeed on any ground whatever, except that of an interference. 3 "Where frauds are ingenious enough to keep clear of all known defences to infringement suits, the wrongs which they cause are without a remedy, unless the United States can repeal a patent which its officers have fraudulently been induced to grant, or to reissue. So also, where a patent is granted by mistake, instead of being re- fused, as it ought ; and where the ground of refusal does not constitute ground of defence to a suit for infringement ; the wrongs which such a mistake will occasion must be remedied by a repeal of the patent, or they are remediless. 322. Equity has jurisdiction to repeal letters patent for land, where they were obtained by fraud, or issued by mistake ; 1 Railroad Co. v. Duboise, 12 Wallace, 64, 1870. * Doughty v. West, 6 Blatch. 433, 1869. 3 Mowry v. Whitney, 14 Wallace, 439, 1871. 234 EEPEAL OF PATENTS. [CHAP. XTV. whenever the United States files a bill stating the facts, and praying that the letters may be annulled. 1 This doctrine is equally applicable to patents for inventions, unless the Supreme Court mistook the law, when concerting its obiter 1 dictum in Mo wry v. Whitney. 3 Judge SHEPLEY" was ap- parently of opinion that the Supreme Court did deviate on that occasion ; and in an obiter dictum of his own, he stated his reasons for taking the opposite view. 8 Those reasons are not without weight ; and inasmuch as the point has never been adjudicated, it is at present impossible to know whether any court has jurisdiction, on any ground of fraud or mistake, to repeal letters patent for inventions. Assuming, however, that such a jurisdiction does inhere in some class of courts, it is possible to outline its character ; and to base that outline upon adjudicated cases of undoubted authority. That there- fore is the remaining function of this short chapter. 323. A bill to repeal a patent must be filed by the United States ; ' acting through the United States district attorney of the district wherein it is filed ; 6 and it must be filed in the Circuit Court of the United States for that district ;" and be filed before the expiration of the patent which it seeks to repeal. 7 No citizen has any power to compel the United States or the district attorney to file such a bill ; or to control its prosecution after such a bill is filed. 8 The filling in of this outline must await the passage of time, and the development of jurisprudence ; if indeed the whole subject of repeal of patents does not require to be founded on future legislation. 1 United States v. Stone, 2 Wallace, Chemical Works, 2 Bann. & Ard. 308, 535, 1864. 1876. * Howry v. Whitney, 14 Wallace, 6 Revised Statutes, Section 629. 440, 1871. p. 9. 3 Attorney-General v. Rumford ' Bourne v. Goodyear, 9 Wallace, Chemical Works, 2 Bann. & Ard. 308, 811, 1869. 1876. 8 New York & Baltimore Coffee 4 Mowry u. Whitney, 14 Wallace, Polishing Co. v. New York Coffee 440. 1871. Polishing Co. 9 Fed. Rep. 580, 1881. & Attorney-General v. Rumford CHAPTER XV. QUI TAM ACTIONS. 324. Qui tarn actions, defined and described as they exist in the patent laws. 825. The wrongs which are the foundations of such actions. 326. The first two of those three classes of wrongs. 327. The third of those three classes of wrongs. 328. Wrongs of either class are com- pleted when the articles are illegally marked, without any subsequent using or selling. 329. The amount of the recoverable penalty. 330. The plaintiff must be one natural person. 331. The forum for qui tarn actions. 332. The form of the suit, and the requisites of a declaration, in such an action. 333. Injunctions to restrain the com- mission of wrongs of either of the first two classes. 334. Appeals in qui tarn cases. 324. THESE are certain actions at law, which derive their name from the Latin words qui tarn, used at the beginning of the declaration in such an action, in times when all declara- tions were written in the Latin language. No such action was known to the common law of England ; but several actions of the kind have long been prescribed by statute, in that country, and in this. Qui tani actions relevant to patents are- authorized by Section 4901 of the Revised Statutes. That statute forbids certain classes of acts ; and provides that who- ever commits an act of either of those classes, shall be liable to a penalty of not less than one hundred dollars, with costs ; and that any person may sue for that penalty, in any Dis- trict Court of the United States within whose jurisdiction the offence was committed ; and that one half of the pen- alty, when recovered, shall go to the plaintiff, and the other half to the United States. 325. The forbidden acts are : 1. Unauthorized marking, upon any patented article, of the name, or any imitation of the 236 QUI TAM ACTIONS. [CHAP. XV. name, of the patentee. 2. Unauthorized marking, upon any patented article, of the word " patent" or " patentee," or the words " letters patent," or any word of like import, with intent to imitate or counterfeit the mark or device of the patentee. 3. Marking upon any unpatented article the word " patent," or any word importing that the same is patented, for the purpose of deceiving the public. 326. The first two of these three classes of acts are injuri- ous to the public, and to the patentees. They are injurious to the public in that they are adapted to mislead persons into buying and using articles which were made and sold in viola- tion of patents, and which therefore cannot be lawfully used even by innocent purchasers. The law provides that those who have a right to make and sell patented articles shall mark those articles with the word "patented;" 1 and that other persons shall not so mark such articles.' When buying anything which is not so marked, a purchaser properly concludes that it is not patented, and that he may therefore use it without risk of a suit for infringe- ment ; and when buying anything that is so marked, the purchaser concludes, with equal propriety, that it was made and sold by the patentee or some one lawfully authorized by him, and that therefore it may be lawfully used to any extent desired. It is clear, that on these accounts, the first two of the forbidden acts are detrimental to public security, and therefore opposed to public policy. The same acts are also injurious to patentees, and they will be considered in that aspect in a subsequent section. 327. The last of the three forbidden classes of acts is injurious to the public, in that it is adapted to mislead persons into an opinion that they have no right to make and use, or make and sell, other specimens of the thing marked as being patented. When an unpatented thing is so marked, it is im- material whether it is a patentable thing or not.* This point is so clear that it would not be thought to require or admit 1 Revised Statutes, Section 4950. Oliphant v. Salem Flouring Mills * Revised Statutes, Section 4901. Co. 5 Sawyer, 128, 1878. CHAP. XV.] QTH TAM ACTIONS. 237 elaboration, had not a judge in one case expressed a contrary opinion. 1 Wliether a thing is patentable or not depends on considerations of which the public as a whole are necessarily ignorant. They may therefore be deceived by seeing the word " patented" upon an unpatentable unpatented article, as readily as by seeing the same word on a patentable unpatented article. That word warns them not to copy that article. They are as reluctant to disregard that warning on a supposi- tion that the article is not patentable, as they are on the hypothesis that it is not patented ; and they are as effectu- ally diverted from exercising their right to copy it in the one case as in the other. Intent to deceive the public is a necessary element of the forbidden act now under consideration ; and that intent does not exist when the person marking, is himself mistaken relevant to his right so to mark ; 2 or where the word ' l patent- ed" is accompanied by other words or characters which indicate that the article was once the subject of a patent, but that the patent has expired at the time of the marking. 3 Inasmuch as all persons are presumed to intend the natural consequences of their acts, proof of an act which was adapted to deceive the public, is sufficient proof of the intent to de- ceive, unless the doer establishes his innocence of that intent. The burden of proof therefore lies upon the defendant, in this particular. 4 328. Proof that the article illegally marked patented was afterward sold, or was otherwise presented to the notice of the public, is not a necessary element in either of the acts which are forbidden by the statute ; but proof that the intent to deceive the public existed when the marking was done is such an element. Accordingly, if a person illegally marks an article, his offense is complete, and is not condoned by a subsequent omission to profit by that offense ; but where a person marks 1 United States v. Morris, 2 Bond, 8 Wilson v. Mfg. Co. 12 Fed. Rep. 27, 1866. 57, 1882. Walker v. Hawxhurst, 5 Blatch. 4 Brig Struggle v. United States, 494, 1867. 9 Cranch, 74, 1815. 238 QUI TAM ACTIONS. [CHAP. XV. an article without any intent to deceive, and afterward uses the article so marked, for purposes of deception, he does not violate the statute. 1 329. The penalty prescribed by the statute for either of the forbidden acts is " not less than one hundred dollars ;" and Justice CURTIS well decided that such language must, in a penal statute like this, be strictly construed, and that, when so construed, it authorizes a penalty of precisely one hundred dollars and no more." The district judge in the same district, in a later case, instructed a jury to assess the "damages" not less than one hundred dollars and as much more as they thought proper. 3 That instruction was not ac- companied by any reasoning on the subject, and was apparently made in ignorance of the elaborate contrary decision of Justice CURTIS. The latter decision may therefore safely be said to embody the law on this point. 330. The plaintiff in a qui tarn action for illegally marking a patented or unpatented article, may be any " person." It was decided under a similar statute relevant to copyrights, that a plurality of persons could not join as plaintiffs in an action of the kind. 6 The language of that copyright statute was identical with that of the present patent statute in this particular ; and the same good reasoning which carried the court to its conclusion in the copyright case, will probably carry any court to the same conclusion in any qui tarn action under the patent statute. The person who sues must be a natural and not an artificial person ; and he must sue in his own name and not in that of the United States.' 331. Jurisdiction in qui tarn actions, unlike that in other kinds of patent suits, is conferred upon District Courts, not upon Circuit Courts, of the United States, and is conferred upon the particular court within the district of which the forbidden 1 Nichols v. Newell, 1 Fisher, 647, 4 Revised Statutes, Section 4901. 1853. Ferrett v. Atwill, 1 Blatch. 153, J Stimpson v. Pond, 2 Curtis, 502, 1846. 1855. United States v. Morris, 2 Bond, Nichols u. Newell, 1 Fisher, 659, 27, 1866. 1853. CHAP. XV.] QUI TAM ACTIONS. 239 act was committed, rather than upon the court of any district within which the defendant resides or may be found. 1 There is, however, another section of the Kevised Statutes which provides that. "All pecuniary penalties and forfeitures may be sued for and recovered either in the district where they accrue or in the district where the offender is found. " * 332. The proper form of common law action, in qui tarn cases, is that of debt. 3 Inasmuch, however, as no particular form is prescribed by the Federal statute, the code forms of complaints or petitions are to be used in code States. 4 The declaration, complaint, or petition, as the case may be, ought to state all the elements of the forbidden act upon which it is based ; 5 and to charge that the act was contrary to the form of the statute in such cases made and pro- vided." It is not enough to charge that the act was con- trary to the law in such cases made and provided ; 7 but to aver it to have been contrary to the form of the statutes in such cases made and provided, though inartistic, is not fatal. 8 It is not necessary to aver the uses to which the penalty when recovered, is to be applied. 9 333. The first two of the classes of acts, forbidden by Section 4901 of the Revised Statutes, are not only injurious to the public, in the manner already explained ; but they are also injurious to the rightful patentees. Such acts enable infringers to increase the amount of their infringements, by inducing the public to believe that the articles they sell were lawfully made, and may be lawfully sold and used. So also, such acts may enable infringers to palm off on the public an inferior article, the using of which will disappoint the pur- 1 Revised Statutes, Section 4901. Sears v. United States, 1 Gal- 2 Revised Statutes, Section 732. lison, 259, 1812. 3 Stimpson v. Pond, 2 Curtis, 505, 7 Smith v. United States, 1 Gal- 1855 ; Jacob v. United States, 1 lison, 264, 1812. Brockenbrough, 520, 1821. 8 Kenrick v. United States, 1 Gal- 4 Revised Statutes, Sections 721, lison, 273, 1812. 914. Sears v. United States, 1 Gal- 6 Ferrett v. Atwill, 1 Blatch. 155, lison, 259, 1812. 1846. 240 QUI TAM ACTIONS. [CHAP. XV. chaser, and thus operate to injure the reputation of the genuine thing. For these reasons, it has been held that a person who is guilty of an act of either of the first two classes, may be restrained by an injunction from any repetition of such an act. 1 334. A writ of error lies to the Circuit Court for the same district, from the final judgments of a District Court, in a qui tarn patent case, because such a case is a civil case, 8 and because the matter in dispute in every such case exceeds the sum of fifty dollars ; * but no such writ of error lies from the Circuit Court to the Supreme Court, unless at least fifty pen- alties can be recovered in one action, and a judgment for five thousand dollars thus be obtained ; 4 for a qui tarn, patent case is not a case touching a patent right. 5 Such actions are based on pretensions of patent rights, where no such right exists. 1 Washburn & Moen Mfg. Co. v. * Revised Statutes, Section 692, 18 Haish, 4 Bann Mowry v. Whitney, 14 Wallace, 620, 1871. 244 INFRINGEMENT. [CHAP. XVI. The Supreme Court found all of the steps of the complain- ant's process in the defendant's doings, though confessedly the reheating was done by different means, and the slow cool- ing regulated on different principles, from those which caused and controlled the corresponding parts of the complainant's process. 337. The case of Cochrane v. Deener ' involved the in- fringement of a patent for a process of winnowing impurities out of ground wheat, while the flour is being separated from the other parts of the meal by means of fine cloth sieves, commonly called ' ' bolts. ' ' The patent described a suitable apparatus by means of which to practice this process. It consisted of a series of cylindrical sieves, covered with cloth of progressively finer meshes, and having within them a series of air pipes, so disposed that when the ground wheat was in the sieves, and the sieves were revolving, air blasts were blown from the ends of those pipes, into and among the particles of ground wheat. Those air blasts operated to blow the im- purities through the opening in the top of the bolting chamber, at the same time that the revolutions of the sieves operated to separate the flour from the middlings. The result of the whole operation was to separate the ground wheat into three sorts of matter, and to place those three sorts in three different receptacles. The defendant accomplished the same result, by winnowing the impurities out of the ground wheat, while the flour was being separated from the other parts of the meal, by means of fine cloth sieves. But the defendant's sieves were flat, and the air blasts were blown through those sieves from below and reached the impurities through the cloth, instead of reaching them from the ends of pipes located on the same side of the cloth, as that occupied by the ground wheat. The Supreme Court, however, held that process to infringe the complain- ant's patent, notwithstanding these differences. 338. No process patent is infringed where any one of the series of acts which constitute the process is omitted by the 1 Cochrane v. Deener, 94 U. S. 787, 1876. CHAP. XVI.] INFRINGEMENT. 24:5 supposed infringer, unless some equivalent act is substituted for the one omitted. 1 Precisely what constitutes equivalency, as between acts, has never been decided or stated by the Supreme Court. Reason seems to indicate that one act is the equivalent of another when it works in substantially the same way to accomplish the same result. Accordingly, it has been held that tamping oil wells with benzine, is equivalent to tamping them with water in respect of the series of acts which constitute the process covered by the Roberts torpedo patent." 339. Machines and manufactures may well be treated together in respect of infringement, because no exact line can be drawn between them, and because the same rules of in- fringement are applicable to both those classes of tangible things. A patent for a machine or manufacture is infringed by him, who, without ownership or license, makes, or uses, or sells any specimen of the thing covered by any claim of that patent. It is not an infringement of a patent, to make, use or sell any specimen of any invention described but not claimed therein ; 3 because a patent covers only what it claims. But whoever infringes any one claim of a patent infringes the patent, whether or not it contains other claims which he does not infringe.* Whether a particular thing made or used or sold by a particular person, infringes a particular claim of a particular patent, is always a question of fact. In some cases that ques- tion can readily be decided by the application of one rule of law, and sometimes by the application of another, and some- 1 Dittmar v. Kix, 1 Fed. Rep. 342, 1820 ; Wyeth v. Stone, 1 Story, 273, 1880 ; Hammerschlag v. Garrett, 10 1840 ; Pitts v. Whitman, 2 Story, 609, Fed. Rep. 479, 1882 ; Cotter r. Cop- 1843 ; Colt v. Arms Co., 1 Fisher, 108, per Co., 13 Fed. Kep. 234, 1882. 1851 ; Pitts v. Wemple, 2 Fisher, 2 Roberts v. Roter, 5 Fisher, 296, 10, 1855 ; Foss v. Herbert, 1 Bissell, 1872. 121, 1856 ; Morris v. Barrett, 1 3 Howe v. Williams, 2 Clif. 262, Bond, 254, 1859 ; Singer v. Walmsley, 1863 ; Waterbury Brass Co. v. Miller, 1 Fisher, 558, 1860 ; McComb v. 9 Blatch. 93, 1871 ; Toohey v. Hard- Brodie, 1 Woods, 153, 1871 ; Mc- ing, 4 Hughes, 253, 1880. Comb v. Ernest, 1 Woods, 195, 4 Moody v. Fiske, 2 Mason, 115, 1871. 246 INFRINGEMENT. [CHAP. XVI. times it can be decided only by the judicial sagacity of the tribunal before which the question is tried. Such relevant rules of law as are well established, will now be stated, and, as far as necessary, will be illustrated by describing the leading cases which embody them. 340. The respective results of a machine or manufacture covered by the claim of a patent, and of a machine or manu- facture alleged to infringe that claim, do not furnish a criterion by which to decide the question of infringement. Those re- sults may be identical, while the things which produce them are substantially different. Any person may accomplish the result performed by a patented thing without infringing the patent, if he uses means substaatially different from those of the patent. 1 To hold the contrary of this rule would be to retard, and not to promote the progress of the useful arts. 2 So also, on the other hand, the respective results of patented and alleged infringing machines or manufactures may be entirely different without causing the latter to escape the charge of infringement even when that charge is based on unlicensed using. This rule results from the well-established point of law that it is an infringe- ment of a patent to use any machine or manufacture claimed therein, though such use is for a purpose which is not men- tioned in the patent. 8 341. Mode of operation is a criterion of infringement on one side of that question, but not on the other. If the mode of operation of an alleged infringing thing is substantially different from that covered by the claim alleged to be in- fringed, it follows that the charge of infringement must be negatived ; 4 but if the mode of operation is substantially the same it does not follow that the charge of infringement must be affirmed. In that case the question must be decided by some additional criterion. To establish an infringement of a 1 O'Reilly v.Morse, 15 Howard, 62, 159, 1871; Zinn v. Weiss, 7 Fed. 1853. Rep. 916, 1881 ; Union Stone Co. v. Smith v. Downing, 1 Fisher, 84 Allen, 14 Fed. Rep. 353, 1882. 1850. 4 Smith v. Downing, 1 Fisher, 83, Mabie v. Haskell, 2 Clif. 511, 1850 ; Eames v. Cook, 2 Fisher, 149, 1865 ; McComb v. Brodie, 1 Woods, 1860. CHAP. XVI.] INFRINGEMENT. 247 claim, the facts must be subjected to several successive tests. If the case fails on either of those tests, no further inquiry need be made ; but an infringement cannot be affirmed till all those tests have been applied and have been withstood. The first of these is that which relates to identity of mode of operation. It is therefore important to know wherein this requisite identity consists. A dogmatic statement on that point has probably never been ventured by any court. The nature of the question seems not to admit of an answer which shall be at once short and sufficient. The best way to investi- gate the subject is probably to reason by analogy from prec- edents ; and accordingly several of the sections which imme- diately follow, are devoted to an analysis of cases, with a view to furnishing the investigator with data for such reasoning. 342. The Cawood patent ' covered a machine which com- bined the mode of operation of an anvil, with the mode of operation of a vise. A drawing of the machine is printed on page 492 of 1 Wallace. The railroad rail mended upon it, was supported by it as by an anvil ; and at the same time was clasped by it as by a vise. The Supreme Court held that the " Michigan Southern" machine did not infringe the Cawood patent, because while that machine did clasp the rail as a vise, it did not support the rail as an anvil. The same tribunal also held that the Beebe and Smith machine did not infringe the Cawood patent, because its mode of operation was different. It both supported and clasped the rail, but it clasped it by holding it between two jaws, which jaws, when in position, rested in a Y-shaped notch in the anvil. The exterior of the jaws were also V-shaped, in order to fit the notch, and they clasped the rail because of their gravity, and not in the manner of a vise. They also supported the rail, but in a manner peculiar to themselves, and not in the manner of an anvil. 343. The driven-well patent, reissue No. 4372, covers an interesting invention. That invention is practised by driving into the ground a long tube closed and pointed at its lower 1 Cawood Patent, 94 U. S. 706, 1876. 248 INFRINGEMENT. [CHAP. XVI. end, and having perforations through its sides just above that end ; and by attaching a pump to its upper end ; and by work- ing that pump whenever water is desired. The mode of operation of that well is as follows : The working of the pump creates a vacuum in the tube, and that vacuum in turn creates a vacuum outside of the tube in the neighborhood of its lower end, and the latter vacuum draws to itself all the water in several millions of cubic feet of the surrounding earth. The alleged inf ringer in one case, 1 followed the patent in every particular except that instead of driving the tube into the earth, or into a hole previously made by driving down a rod smaller than the tube, he bored a hole into the earth with an augur larger than the tube which he placed in the hole after the augur was withdrawn. This apparently slight change caused the well to have a substantially different mode of operation from that covered by the patent. The pump, indeed, created the vacuum in the tube as before, but that vacuum created no vacuum around outside of the tube, because the space outside of the lower end of the tube was in direct .communication with the external air, through the annular space which surrounded the tube throughout its entire length and which was due to the fact that the tube was smaller than the hole in which it was placed. Because of this difference, Judge McCitARY, with excellent discrimination, held tli at the well of the defendant did not infringe the driven-well reissue. Judges SHIRAS and LOVE afterward decided that reissue to be void, because they found it to be for a different invention from that covered by the original patent." They based this finding on the fact that the original directed the hole to be made in the ground by driving down a rod, having a swell thereon, and directed the insertion, in the hole, of a tube somewhat smaller than the diameter of the swell of the rod ; and on the further fact that the original did not state that the pump must be attached to the tube by an air-tight 1 Andrews v. Long, 12 Fed. Hep. * Andrews u. Hovey, 16 Fed. Hep. :871, 1880. 396, 1883. CHAP. XVI.] INFRINGEMENT. 249- connection. The finding cannot be thought to stand on this last fact, because the original patent did state that water, when not flowing naturally, might be drawn from the tube by any of the known forms of pump, and because it could not be so drawn without an air-tight connection between the pump and the tube. But the first fact stated by the judges to sup- port their finding was alone sufficient to have that effect. That fact showed the original patent to be confined to an invention identical with that which, in the former case, Judge McCRARY had held to be substantially different from the invention covered by the reissue, and which was substantially different because it had a different mode of operation. 344. Blanchard's patent for a machine for turning and cutting irregular forms, consisted of a combination of a model, a guide, and a cutter wheel. When the machine was in operation the guide followed the irregularities of the model, as the model revolved, and the guide also caused the cutter to follow the same irregular curves while the rough block was revolved under the cutting edges. Both model and block had a continuous lateral motion, as well as a continuous rotary motion, and therefore the guide and the cutter wheel pro- ceeded in corresponding spiral courses. In that way the guide traversed all parts of the surface of the model, and the cutter- wheel traversed all portions of the rough block, and thus reduced the latter to conformity with the shape of the model. An infringer in one case ' so combined the parts of the machine, that the model and rough block both rotated by an intermittent motion, and moved laterally by a rectilinear reciprocating motion. Justice GRIER held that this mode of operation was substantially unchanged from that of the patent. 345. Hayden's patent for a machine for making brass kettles consisted of two general divisions. 1. An engine lathe with its mandrel to revolve the pulleys and the gearing, and having special devices for the special work in hand. 2. A furnishing or spinning tool and tool carriage, secured to the frame of the lathe, and having special devices to make it work 1 Blanchard v. Reeves, 1 Fisher, 103, 1850. 250 INFRINGEMENT. [CHAP. XVI. harmoniously with the lathe in producing the kettles which the two divisions of the machine jointly operated to manufact- ure. These two divisions were operated by one motive power, like a shaft, which might be connected with a water wheel, or with a steam engine, or with any other suitable source of motion. The inf ringer in one case. 1 operated the first division of the machine by one such motive power ; but he operated the second division by another, namely by the hand of a workman turning a crank. Judge WOODRUFF held that this was not such a change of mode of operation as amounted to enough to negative infringement. 346. The Wells hat-body machine consisted of a revolving brush to separate and throw fibres of fur ; a perforated vacuum cone to receive the fur on its exterior surface ; and an inter- mediate tunnel, to guide the fur from the brush to the cone. The patent which was granted for that invention was three times surrendered and reissued. The second reissue was involved in a celebrated Supreme Court case." That reissue described the machine which Wells invented, and it claimed the mode of operation, substantially as described, of form- ing bats (hat bodies) of fur fibres. The object of this claim was to cover the machine of Seth Boyden, a machine which had the same general mode of operation as that of Wells, but which was substantially different from the latter in one of its parts. This attempt to base a charge of infringement on sameness of " mode of operation" alone, was occasioned by the fact, that Justice CURTIS, in delivering the opinion of the Supreme Court in the case of Winans v. Denmead, 3 had used the phrase with great frequency. He used it exactly twenty times in that case ; and the counsel for the Wells patent, when arguing the case of Burr v. Duryee, formulated seven doc- trines which they stated were deducible from that score of instances. Among those doctrines, the fourth was this : 1 Waterbury Brass Co. v. Miller, 9 1863. Blatch. 94, 1871. a Winans v. Denmead, 15 Howard, * Burr v. Duryee, 1 Wallace, 531 330, 1853. CHAP. XVI.] INFRINGEMENT. 251 That copying a mode of operation is an infringement. But Justice GRIER, who was one of the majority of the court which decided Winans v. Denmead, was convinced that the latter decision was erroneous, or that it did not mean what it was generally understood to signify, for in Burr v. Duryee he delivered the unanimous opinion of the Supreme Court reject- ing the complainant's contention in terms bordering on those of contempt. The case of Winans v. Denmead cannot there- fore be fairly cited as an authority on this point, for if it is not consistent with Burr v. Duryee, it was overruled by the latter, and if it is consistent with the latter case, its expres- sions are likely at least to mislead the reader, as they misled the counsel for the Wells patent. Harmoniously with its decision in Burr v. Duryee, the Supreme Court has ever since had a positive tendency to disregard whatever is abstract and intangible in questions of infringement, and to base its conclu- sions upon the concrete features of the issues at bar. 347. Addition to a patented machine or manufacture does not enable him who makes, uses or sells the patented thing with the addition, to avoid a charge of infringement. 1 This is true even where the added device facilitates the working of one of the parts of the patented combination, and thus makes the latter perform its function with more excellence and greater speed. 2 But there is a necessary qualification of this rule, which must not be overlooked ; a qualification founded as yet upon no adjudicated case exactly in point, but based on considerations of justice which cannot be ignored nor disputed. If a patented combination differs from some older combina- tion, only in the omission of one of the parts of the latter, and in a resulting difference of mode of operation, the restora- tion of the older structure by adding the part which the patented combination omitted, would not constitute an in- fringement of the latter. 348. Changing the relative positions of the parts of a machine or manufacture does not avert infringement where 1 Carr v. Rice, 1 Fisher, 209, J Cochrane v. Deener, 94 U. 8. 1856. 786, 1876. 252 INFRINGEMENT. [CHAP. XVI. the parts transposed perform the same respective functions after the change as before. 1 In the first of the cases just cited, the thing transposed was a beater shaft in a corn-sheller ; both in its original and in its new position, its function was to force the ears of corn into the throat of the shell er. In the second case, the thing transposed was the outlet vapor flue of a quicksilver furnace ; and that flue operated in the same way to perform the same function in the infringing apparatus that it did in the patented furnace. But changing the relative positions of the parts of a machine does avert infringement, where the changing of those positions so changes the functions of the parts, that the machine acquires a substantially different mode of operation, even though the result of the machine remains the same." A suit for infringement cannot be sustained against him who makes, uses or sells a substantially different combination, even though it includes exactly the same ingredients as those claimed in combination by the patent in suit 3 The owner of a patent for a combination cannot suppress a newer, better and sub- stantially different combination of the same ingredients. 4 349. Omission of one ingredient of a combination covered by any claim of a patent, averts any charge of infringe- ment based on that claim." A combination is an entirety. If one of its elements is omitted, the thing claimed dis- . appears. Every part of the combination claimed is con- clusively presumed to be material to the combination, and no evidence to. the contrary is admissible in any case of alleged infringement." The patentee makes all the parts of a com- bination material, when he claims them in combination and 'Adams v. Mfg. Co., 3 Bann. & B Prouty v. Buggies, 16 Peters, 341, Ard. 1, 1877 ; Knox v. Quicksilver 1842 ; Eames v. Godfrey, 1 Wallace, Mining Co. 6 Sawyer, 438, 1878. 78, 1863 ; Case y. Brown, 2 Wallace, 3 Brooks u. Fisk, 15 Howard, 221, 320, 1864 ; Dunbar u. Myers, 94 1853. U. S. 187, 1876 ; Fuller v. Yentzer, 3 Gill. v. Wells, 22 Wallace, 14, 94 U. 8. 297, 1876. 1874. Vance v. Campbell, 1 Black, 430, 4 Seymour v. Osborne, 11 Wallace, 1861 ; Le Fever v. Remington, 13 655, 1870. Fed. Rep. 86, 1882. CHAP. XVI.] INFRINGEMENT. 253 not separately. 1 A patentee may, however, describe all the devices in his machine or manufacture, and instead of claim- ing all or any particular portion .of them in combination, may claim so much of the described mechanism as produces a particular described result. Such a claim is infringed by him who, without ownership or license, makes, uses or sells any apparatus made up of enough of the described devices to pro- duce the specified result, by the specified mode of operation." The rule stated at the head of this section is perhaps the best known and most frequently applied of all the rules which pertain to infringement ; but it has no application to anything which depends upon a particular form for patentability, and which for convenience may be made in several sections. A shoe last, for example, even if made in only two sections, may infringe a patent for a last of the same shape, but which is made in three sections instead of in two. 3 350. No substitution of an equivalent for any ingredient of a combination covered by any claim of a patent can avert a charge of infringement of that claim. 4 But like substitution of something which is not an equivalent, will have that effect. 6 The doctrine of equivalents may be invoked by , any patentee whether he claimed equivalents in his claim," or described any in his specification/ or omitted to do either or both of those things. But where a patentee states in his specification that a particular part of his invention is to be constructed of a particular material, and states or implies that he does not contemplate any other material as being suitable for the purpose, it is not certain that any other material will be treated by a court as an equivalent of the one recommended in the patent. 8 Combination patents would generally be 1 Water-Meter Co. v. Desper, 101 562, 1878. U. S. 332, 1879. Dental Vulcanite Co. v. Davis, * Silsby v. Foote, 14 Howard, 218, 102 U. S. 229, 1880. 1852. i Union Metallic Cartridge Co. v. * Mabie v. Haskell, 2 Clif. 511, 1865. United States Cartridge Co. 2 Bann. 4 O'Reilly v. Morse, 15 Howard, 62, & Ard. 594, 1877. 1853 ; Imhaeuser v. Buerk, 101 U. S. 8 Aiken v. Bemis, 3 Woodbury & 655, 1879. Minot, 348, 1847 ; Harris v. Allen, 5 Railway Co. v. Sayles, 97 U. S. 15 Fed. Rep. 106, 1883. 254 INFRINGEMENT. [CHAP. XVI. valueless in the absence of a right to equivalents, for few combinations now exist, or can hereafter be made, which do not contain at least one element, an efficient substitute for which could readily be suggested by any person skilled in the particular art. 1 351. To define an equivalent is at present a weighty and difficult undertaking. It is weighty because many rights of property now depend, and always will depend, upon the definition. It is difficult because the deliverances of the Supreme Court upon the subject are inharmonious, and be- cause none of those deliverances are accompanied by ele- mentary reasoning on the merits of the question. The primary points are plain. The difficulties arise in the latter part of the problem ; but the plain points require to be stated in order that the others may be methodically reached and intelligently discussed. 352. One thing, to be the equivalent of another, must perform the same function as that other.* If it performs the same function, the fact that it also performs another func- tion is an immaterial one. 3 Therefore, it sometimes happens that a junior device is an equivalent of a senior device in a sense that will constitute it an infringement of a patent for the latter ; at the same time that the senior device is not an equivalent of the junior device in a sense that will cause the former to negative the novelty of the latter. 4 One thing may accordingly be an equivalent of another, though it does more than that other, but it cannot be such an equivalent if it does less.* But the test of function is only the first of several tests of equivalency. The fact that one thing performs the same function as another, though necessary, is not suffi- cient to make it an equivalent thereof. 8 1 Turrell v. Spaeth, 3 Barm. & Ard. mons, 3 Bann. & Ard. 623, 1878. 458, 1878. Loercher v. Crandal, 11 Fed. Rep. * Machine Co. v. Murphy, 97 U. S. 878, 1881. 125, 1877. Bliss v. Haight, 3 Fisher, 626, 1869. 8 Foss v. Herbert, 2 Fisher, 31, Eames v. Godfrey, 1 Wallace, 78, 1856 ; Sarven v. Hall, 9 Blatch. 524, 1863 ; Conover v. Roach, 4 Fisher, 1872 ; Wheeler v. Reaper Co., 10 12, 1857 ; Merriam v. Drake, 5 Fisher, Blatch. 195, 1872 ; Kendrick v. Em- 259, 1872. CHAP. XVI.] INFRINGEMENT. 255 353. Function must be performed in substantially the same way by an alleged equivalent, as by the thing of which it is alleged to be an equivalent, in order to constitute it such. 1 This substantial sameness of way is not necessarily a theoretical scientific sameness. In a purely scientific sense, a screw always performs its function in a substantially different way from a lever, and in substantially the same way as a wedge. Screws and wedges are equally inclined planes, while a lever is an entirely different elementary power. But screws and levers can practically be substituted for each other in a larger number of machines, than screws and wedges can be similarly substituted. When a lever and a screw can be interchanged and still perform the same function with a result that is beneficially the same, they are said to perform the same func- tion in substantially the same way. 2 But one thing may be an equivalent of another in one environment, and not such an equivalent in another situation. 3 Springs and weights are generally equivalents ; 4 but when the environment is such that a spring will operate successfully while a weight will not so operate, then they are not equivalents. B While in most cases a mere handle is not an equivalent of a lever, it is such an equivalent where its connections are such that it performs the same function in substantially the same way. 6 Indeed, in one case, the Supreme Court went to the length of deciding a con- fined column of water in a cylinder, worked by a pump and working a piston, to be an equivalent of a combination of a vibrating arm, toggle joint, and other mechanical devices, when used to transmit vibratory power. 7 In view of the foregoing adjudications, and of the nature of the question, it is at present impossible to say precisely wherein the required sameness of way of performing a function really 1 Sickels v. Borden, 3 Blafcch. 535, 4 Imhaeuser v. Buerk, 101 U. S. 1856 ; Burr v. Duryee, 1 Wallace, 656, 1879. 573, 1863 ; Werner v. King, 96 U. 8. 6 Cross v. Mackinnon, 11 Fed. 230, 1877. Rep. 601, 1882. * Tnrrell v. Spaeth, 3 Bann. &Ard. 6 Corn-Planter Patent, 23 Wallace, 458, 1878. 235, 1874. 3 Cochrane v. Deener, 94 U. S. 789, 7 Blake v. Robertson, 94 U. S. 732, 1876. 1876. 256 INFRINGEMENT. [CHAP. XVL consists ; and in view of the vast variety of present and future mechanical devices and modes of operation, it will probably be always impossible to formulate a criterion which will be applicable to every case. The safest reliance is upon the analogies of precedents, and upon the instructed sagacity of those who are called upon to advise and to decide in new cases. 354. Whether a device, in order to be an equivalent of another, must have been known at the time of the invention or of the patent, is the final inquiry relevant to the characteristics of equivalents. It is a point of large importance. The affirma- tive view seems to have originated in the mind of Justice CLIFFORD, and to have originated there in the Fall of 1865. In November of that year he instructed a jury that a thing to be an equivalent of an article in a patent, must have been known at the date of the invention, and of the patent. 1 The rule of the Supreme Court, at that time, seems to have been that a thing might be an equivalent of a thing in a patent, if known to be such at the time of the infringement. 2 Indeed, Justice CLIFFORD himself, in 1861, had delivered a carefully prepared instruction to a jury, in which he said : " You will regard the substantial equivalent of a thing as being the same as the thing itself, so that, if two machines do the same work, in sub- stantially the same way, and accomplish substantially the same result, they are the same ; and so if parts of the two machines do the same work, in substantially the same way, and accomplish substantially the result, those parts are the same, although they may differ in name, form, or shape." * Engaged, as he then was, in defining an equivalent, he wholly omitted the element of age. Indeed, as late as October, 1865, he found a defend- ant's device to be an equivalent of a thing in a patent, because it performed the same function, in substantially the same way, and produced substantially the same result. 4 Here is no- allusion to any element of age in the characteristics of an 1 Union Sugar Refinery u. Matthies- 3 Gaboon v. Ring, 1 Clif. 620, sen, 2 Fisher, 629, 1865. 1861. 8 O'Reilly u. Morse, 15 Howard, Roberts u. Harnden, 2 Clif. 506, 123, 1853. 1865. CHAP. XVI.] INFRINGEMENT. 257 equivalent. That element was introduced into the definition later in the Fall. But no statute relevant to the subject was enacted in the interval, nor indeed at any other time, either before or since Justice CLIFFORD changed his views. Nor did Justice CLIFFORD ever announce the reasons which carried him to his altered definition. He, however, repeated the later proposition in several subsequent cases. In Seymour v. Osborne, 1 he said, that in order to be an equivalent of a thing in a patent, a device must have been known at the date of the patent. In support of that state- ment lie cited two cases, neither of which appears to relate to the precise point. 8 But after formulating the doctrine he was content to ignore it, and he reasoned out the question of infringement in the case with sole reference to the character of the defendant's machines, and without any regard to the point of time when any parts of those machines first became known. Indeed he expressly said that questions of infringe- ment .are best determined by a comparison of the machines. Now, it is evident that a comparison of two machines has no tendency to show whether a particular device in one of them, was or was not known when the other was patented. In Gould v. Rees 3 Justice CLIFFORD delivered the opinion of the Supreme Court, reversing a judgment in an action at law, because the judge had charged the jury that the omission of one of the elements of a combination, and the substitution of another mechanical device to perform the same function, will not avoid infringement. Now that instruction was clearly wrong, because it did not provide, as it ought, that the sub- stitute must perform the same function in substantially the same way, in order to be an equivalent for the thing for which it is substituted. 4 The Supreme Court, therefore, decided that the instruction was erroneous, but Justice CLIFFORD, in; delivering the opinion, said, in effect, that it ought also to> * Seymour u. Osborne, 11 Wallace, 3 Gould v. Eees, 15 Wallace, 193,. 556, 1870. 1872. 1 Prouty v. Buggies, 16 Peters, 341, 4 Burr v. Duryee,. 1 Wallace, 573,. 1842 ; Johnson u. Boot, 2 Clif. 123, 1863 ; Sickels v.. Borden, 3 Blatch. 1862. 535, 1856. 258 INFRINGEMENT. [CHAP. XVI. have been limited by the proviso that the thing substituted should have been known at. the date of the patent. The case did not call for any decision on that point, because the un- doubted error in the charge was enough to require a reversal of the judgment. Nor is the dictum supported by any reason- ing, or by any citation of authority other than the previous dictum of the same justice in the case of Seymour v. Os- borne. It is true that the doctrine is repeated on page 194, in the same paragraph with an undeniable doctrine of the patent law, and the whole paragraph purports to be supported by nine cited cases. But none of those cases has any relevancy to the point now under examination, though they do support the other doctrine of the paragraph. In Gill v. Wells ' Justice CLIFFORD repeated his revised definition of an equivalent, arid stated that it was based on repeated Supreme Court decisions. He cited seven precedents to sustain this statement. Five of them have no apparent relevancy to the point," and the other two are his own dicta in Seymour v. Osbornc, and Rees v. Gould. He also cited his own prior decision in Roberts v. Harnden, 3 but he who turns to that case will find that its definition of an equivalent is the former one ; the one which omits the element of age. The repetition of the later dicta in Gill v. Wells, was also obiter, because, before repeating it, Justice CLIFFORD had delivered the opinion of the Court holding the instructions which the judge below gave to the jury on the question of the validity of the patent as a reissue, to have been erroneous instructions. In proceeding further Justice CLIFFORD was proceeding merely as a moot judge. Indeed, after laying down his rules on the subject of equivalents and of infringement, his Honor said that : " Inconveniences past estimation would result if those rules should be applied in defining the rights 1 Gill v. Wells, 22 Wallace, 31, Howard, 329, 1850 ; Brooks v. Fisk, 1874. 15 Howard, 212, 1853 ; Vance v. * Prouty v. Ruggles, 16 Peters, 341, Campbell, 1 Black, 428, 1861. 1842 ; Carver u. Hyde, 16 Peters, Roberts u. Harnden, 2 Clif. 506, 514, 1842 ; Stimpson u. Railroad, 10 1865. CHAP. XVI.] INFRINGEMENT. 259 of a patentee to make amendments to the specification of an original patent when applying for a reissue." Union Paper-Bag Machine Co. v. Murphy, 1 decided two years later than Gill v. Wells, was an equity suit which turned on the question of infringement. The court below found non- infringement, but the Supreme Court reversed that decision. In delivering the opinion Justice CLIFFORD returned to his earlier definition of an equivalent ; to that definition which he gave sixteen years before in Cahoon v. Ring, and enforced twel ve years before in Roberts v. Harnden. He now formulated his views as follows : " Authorities concur that 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 accomplish sub- stantially the same result, they are the same, even though they differ in name, form, or shape." But in Imhaeuser v. Buerk 2 Justice CLIFFORD once more repeated his second and revised definition of an equivalent : the definition which he originated in the case of the Union Sugar Refinery v. Matthiesen. But after repeating it he ignored it, and reasoned out the question of infringement in the case, on the basis of his earlier definition : the definition in Cahoon v. Ring : the definition which ignores age, and con- fines itself to function and to character. 355. No other Supreme Court justice has ever inserted just such doctrine as that of Justice CLIFFORD'S second definition of an equivalent, into any opinion of that tribunal. Several cases have been adjudicated in that court, which called for the application of that doctrine, if it is a true one, but it has never been applied to any necessary issue pending therein. On the contrary,, that court, subsequent to the case of Gill v. Wells, expressly decided that two things are equivalents where they perform the same function, in sub- stantially the same manner.* On the other hand Justice 1 Machine Co. v. Murphy, 97 U. S. 65(5, 1879. 125, 1877. a Mason v. Graham, 23 Wallace, 9 Imhaeuser v. Buerk, 101 U. S. 275, 1874. 260 INFRINGEMENT. [CHAP. XVI. BLATCHFORD said in a recent Supreme Court case, that the complainant at bar was " entitled, under decisions hereto- fore made by this Court, to hold as infringements all valve regulations applied to such combination which perform the same office in substantially the same way as, and were known equivalents for, his f orm of valve regulation." 1 But in so saying, Justice BLATCHFORD did not say that the complainant would not have been entitled to hold as infringements all valve regulations, applied to such a combination, which per- formed the same office, in substantially the same way. Nor is such a denial deducible by any fair implication from the facts of the case. Those facts could not only endure the milder test, but could also endure the other and severer one which results when the element of age is inserted in the definition of an equivalent. But the opinion contains no finding and no statement that the milder test would not have been sufficiently severe for the purpose in hand, if the facts had been unable to endure the more exacting criterion. 356. Nearly all the Circuit Courts have uniformly ignored the element of age when inquiring about equivalents, and several of them have decided or stated that one thing is an equivalent of another where it performs substantially the same function, in substantially the same way." Indeed, Justice CLIFFORD himself decided the third of these cases, the case of Graham v. Mason, and in doing so said that " It is a well-settled law that if one device is employed in a similar combination as 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. " Probably only three Circuit Court cases, 3 except a part of those decided by Justice CLIF- 1 Clough v. Mfg. Co. 106 U. 8. 7 Bissell, 382, 1877 ; Evory v. Burt, 178, 1882. 15 Fed. Hep. 112, 1883. * Conover v. Roach, 4 Fisher, 26, 3 King v. Cement Co. 6 Fisher. 1857 ; Conover v. Rap, 4 Fisher, 61, 341, 1873 ; Webster r. Carpet Co. 1 1859 ; Graham v. Mason, 5 Fisher, Bann. Packet Co. v. Sickles, 19 Wai- 4 Bann. & AM. 245, 1879 ; Steam lace, 617, 1873. Stone Cutter Co. v. Sheldons, 15 * Sayles v. Richmond, Fredericks- Fed. Rep. 609, 1883. burg & Potomac Railroad Company, 310 ACTIONS AT LAW. [CHAP. XVHI. The case is, in principle, precisely identical with that of such a nse of a horse, or a boat, or a wagon and team, or threshing- machine giving a right of action in assumpsit." In the second case Judge WHEELER said : " When the Windsor Manufacturing Company sold machines, embodying these inventions, to the defendants for use, it invaded the orator's rights and converted the orator's property to its own use. These acts were tortious, and an action would lie for these wrongs. As that company received money for the orator's property, the orator could waive the tort, and sue in assumpsit for the money, or, what is the same in effect, proceed for an account of the money received. In an action or pro- ceeding for the money, the measure of damages would be the amount of money received, not the amount of damage done, and all right of recovery beyond that would be waived." 420. It is against the policy of the law that the owner of a patent right should lose by reason of its infringement. To prevent such a result, the action of trespass on the case is well adapted, because it measures the plaintiff's recovery by the plaintiff's loss. But it is also against the policy of the law that an infringer should gain by reason of his infringement. To prevent such a result, the action of trespass on the case is not well adapted, because an infringer may often gain far more than the patentee loses by reason of the wrongful act of the former. Patents are peculiar property in this respect. A horse or a wagon is worth about as much to one man as to another, but the use of a patent may be worth ten times as much to a rich infringer as to a poor patentee. It would be a reproach to the patent laws if any infringer could unlaw- fully make, use, and sell specimens of his neighbor's patented invention, and, when called to account in a court of justice, could cancel his liability by paying one tenth of the proceeds of his tort to the owner of the patent. No complete system of law offers such a premium for its own violation. To prevent such failures of justice, it was long the theory and the practice of the United States courts, that equity had jurisdic- tion to enforce a patentee's right to recover an inf ringer's prof- its, independently of all other equitable titles, rights, and CHAP. XVIII.] ACTIONS AT LAW. 311 remedies. 1 But that theory was overruled, and that practice was stopped by the Supreme Court, in the case of Root v. Railway Co." The new rule which was stated and enforced in that case, calls aloud upon courts of law to entertain actions of assumpsit for infringements of patents, if by any means they can find authority for so doing. If no such authority can be deduced from the common law, then it ought to be con- ferred by legislation ; for unless it exists or is supplied, it must often happen in the future that inf ringers will profit by their infringements far more than inventors can profit by their inventions. 421. A majority of the States have abolished all common law actions, and have substituted for the whole of them a single form of proceeding which they call a civil action. The United States statutes provide that " The practice, pleadings, and forms and modes of proceeding in civil causes, other than equity and admiralty causes, in the circuit and dis- trict courts, shall conform, as near as may be, to the practice, pleadings, and forms and modes of proceeding existing at the time in like causes in the courts of record of the State within which such circuit or district courts are held, any rule of court to the contrary notwithstanding,''* and that "Damages for the infringement of any patent may be recovered by action 1 Stevens v. Kansas Pacific Kail- East Tennessee, "Virginia & Georgia way Co., 5 Dillon, 486, 1879 ; Nevins Eailroad Co. 2 Bann. & Ard. 537, v. Johnson, 3 Blatch. 80, 1853 ; 1877 ; Vaughan v. Central Pacific Sickles v. Mfg. Co. 1 Fisher, 222,1856; Kailroad Co. 3 Bann. & Ard. 28, Jenkins v. Greenwald, 2 Fisher, 41, 1877 ; Sayles v. Dubuque & Sioux 1857 ; Imlay v. Kailroad Co. 4 Blatch. City Railroad Co. 3 Bann. & Ard. 219, 228, 1858 ; Perry v. Coming, 6 Blatch. 1878 ; Gordon v. Anthony, 16 Blatch. 134, 1868 ; Howes v. Nute, 4 Clif. 174, 234, 1879; Hendrie v. Sayles, 98 1870 ; Cowing v. Rumsey, 8 Blatch. U. S. 546, 1879 ; Bignall v. Harvey, 18 36, 1870 ; Packet Co. v. Sickles, 19 Blatch. 353, 1880 ; Atwood v. Port- Wallace, 611, 1873 ; Smith v. Baker's land Co. 10 Fed. Rep. 283, 1880; Administrators, 1 Bann. Hayden ti. Oriental Mills, 16, 1867 ; Wetherill v. Zinc Co. 1 15 Fed. Rep. 605, 1883. Bann. & Aid. 489, 1874 ; Anthony u. 342 ACTIONS AT LAW. [CHAP. XVIII. tive opinion, though they left the point open to further debate.' The last of the affirmative decisions was delivered by Judge LOWELL, and is abler than either of the other opinions on that side of the question ; while his predecessor, Judge SHEPLEY, delivered the strongest of the opinions which support the negative view. Those who hold the affirmative of the question, must base their argument on Section 721 of the Revised Statutes, which is a substantial and nearly literal transcript of Section 34 of the Judiciary Act of 1T89, and which provides : " That the laws of the several States, except where the Constitution, treaties, or statutes of the United States otherwise require or provide, shall be regarded as rules of decision in trials at com- mon law, in the courts of the United States, in cases where they apply." This language appears to be broad enough to cover the application to a patent suit, of a State statute pre- scribing the time within which actions of trespass on the case must be begun. But the Supreme Court has held that : " The section above quoted was merely intended to confer on the courts of the United States, the jurisdiction necessary to enable them to administer the laws of the States." a If that doctrine is adhered to by that court, it will follow that State statutes of limitation do not apply to patent actions in the Federal courts. But the holding in the case of the United States v. Reid, does not seem to have been constantly remem- bered by the Supreme Court justices, for while Chief Justice TANEY, who delivered that opinion, still sat upon the bench, the court three times decided that State statutes relevant to rules of evidence are applicable to patent actions at law in Federal courts. 1 In view of the foregoing contradictory authorities, it is cer- tain that the question is deeply enveloped in doubt. The point Carroll, 2 Bann. & Ard. 195, 1875 ; 9 United States v. Reid, 12 How- Siiyl'-s v. Lake Shore and Michigan ard, 363, 1851. Southern Railway Co. 9 Fed. Rep. Vance v. Campbell, 1 Black, 430, 515. 1878. 1861 ; Haussknecht v. Claypool, 1 1 Saylea u. Dubuque and Sionx Black, 435, 1861 ; Wright v. Bales, City Railroad Co. 5 Dillon, 562, 1878. 2 Black, 535, 1862. CHAP. XVIII.] ACTIONS AT LAW. 343 ought therefore to be decided in the negative, for rights of property ought not to be cut off by any statute of limitation, unless that statute is clearly applicable to those rights. 1 478. Replications and subsequent pleadings are seldom required in patent cases, because most of the pleas applicable to such cases, are pleas in bar by way of traverse, and not by way of confession and avoidance. The principal exceptions are the plea of a license ; the plea of a release ; and the plea of a statute of limitation. If the plaintiff purposes to deny the existence of a license or release, as the case may be, his replication should be by way of traverse to the plea, and should conclude to the country, and thus tender issue. So, also, if the plaintiff can show that the license or release covered only a part of the infringement covered by the declaration, the gen- eral replication by way of traverse will be sufficient.* If the plaintiff cannot deny the existence of a full paper, but pur- poses to show that 'it was obtained by duress or by fraud, or that it has been effectually revoked, his replication will state the facts by way of confession and avoidance of the plea, and will conclude with a verification. It will then be the duty of the defendant to file a rejoinder to the replication. If he can deny the duress, or the fraud, or the revocation, as the case may be, his rejoinder will be by way of traverse, and will conclude by tendering issue. If, however, lie cannot deny the truth of the replication, but can avoid its effect by showing that the plaintiff freely ratified the license or release after the alleged duress terminated, or the alleged fraud became known to him, or that he annulled the revocation after making it, then the defendant's rejoinder will be by way of confession and avoid- ance, and will conclude with a verification, and will render necessary a sur-rejoinder from the plaintiff, denying the truth of the rejoinder, and putting himself upon the country. 479. When pleaded to an action based on an infringement, committed before June 22, 1874, of an unextended patent, or 1 Bedell v. Janney, 4 Oilman (HI.) art, 32 Michigan, 28, 1875. 208, 1847 ; Elder v. Bradley, 2 Sneed * 1 Chitty on Pleading, 596. (Tenn.) 253, 1354 ; Lmdwig v. Stew- 344 ACTIONS AT LAW. [CHAP. XVIII. of the extended term of an extended patent, the national statute of limitation will require a replication by way of traverse, if the plaintiff intends to show that the action was brought during the term for which the patent was granted or extended, or within six years after the expiration thereof. If he cannot show that, it will be useless for him to prosecute his action further. No replication by way of confession and avoidance, is applicable in such a case, because there are no facts which take a case out of the national statute of limitation. That statute makes no exceptions in cases of disability of the plaintiffs. 480. A State statute of limitation, when pleaded to an action based on an infringement of a patent, if it is not suc- cessfully met by a demurrer, will require a replication by way of confession and avoidance, based on some cause, which, ac- cording to the laws of the particular State in which the suit is pending, is sufficient to take the case out of the statute. If there is no such cause, the plaintiff must abandon his action, or stand upon his demurrer, and having suffered judgment, go to the Supreme Court on a writ of error. If such a repli- cation is filed, the defendant must file a rejoinder by way of traverse, and tender issue by putting himself upon the country. 481. A similiter must be filed or added by or on behalf of the other party, whenever either the plaintiff or defendant properly tenders issue. As the party to whom issue is well tendered, has no option but to accept it, the similiter may be added for him. It is a mere matter of form, but it is a form which should always be attended to, in common-law pleading. Its omission has sometimes constituted a fatal defect. 1 482. A demurrer may be interposed, by either party in an action at law, to any pleading of his opponent, except another demurrer.* When a demurrer is interposed, the court will ex- amine all the pleadings in the case, and will generally decide against the party who first filed a substantially defective one.* 1 Earle v. Hall, 22 Pickering 5 1 Chitty on Pleading, 661, 666. (Mass.) 102, 1839. 3 1 Chitty on Pleading, 668. CHAP. XVIII.] ACTIONS AT LAW. 345 The principal exception to this rule is, that where the declara- tion is the pleading demurred to, the demurrer will not be sustained if it is too large : that is, if it is pointed at an entire declaration, some independent part of which is good in law. 1 This exception does not apply to demurrers to pleas," or repli- cations, 3 or rejoinders, 4 for it is in the nature of those pleadings to be entire, and if bad in part, to be bad for the whole. 483. Demurrable declarations occur in patent cases only when the plaintiff's pleader omits some of the allegations which are necessary parts of such a pleading ; or when he makes those allegations in improper form ; or where he makes the statement of infringement cover a space of time, part or all of which is remote enough to be barred by some applicable statute of limitation. Every such fault, except those of the last sort, may be readily cured by amendment. It will rarely occur that the whole of an infringement declared upon, can plausibly be claimed to be barred by a statute of limitation ; but it may not hereafter be unusual, for declarations to allege that the infringement sued on, began during the original term of an extended patent, and was continued into the extended term ; or to allege that it began at a point of time more than six years before the beginning of the action, and was continued till after that limit was passed. If, in such a case, the defend- ant thinks that he can successfully interpose the national, or a six -year State statute of limitation, to that part of the claim which arose under the first term of the patent, or to that part of the infringement which occurred more than six years before the bringing of the suit, as the case may be ; he may raise the question by a special demurrer, aimed at the ques- tionable parts of the rights of action respectively. If in such a case he demurs generally to the whole declaration, his demurrer will be overruled ; because it will appear on the argument, that an independent divisible part of the rights of action sued upon, are in any event unbarred by the statute.* 1 1 Chitty on Pleading, 665. \1 Chitty on Pleading, 651. * 1 Chitty on Pleading, 546. 8 1 Chitty on Pleading, 665. 1 Chitty on Pleading, 644. 346 ACTIONS AT LAW. [CHAP. XVIII. 484. Demurrers to pleas may be frequently expected in patent actions at law, as long as a question continues to be enter- tained relevant to the validity of any of the twenty-seven de- fences heretofore enumerated and explained. 1 Most of those defences rest upon unquestioned grounds : upon express statutes of Congress, or upon express decisions of the Supreme Court. But a few of them rest, at this writing, upon argu- mentative deductions from such statutes or from such decisions, or rest upon obiter dicta of that high tribunal. There will always be pleaders who will call those deductions and those dicta in question, as occasion serves, until they are passed upon by the Supreme Court in judicial decisions. Where the various defences are distinctly made in special pleas, a demurrer to each of those which are thought to be bad in law, is the proper mode of presenting the question to the court. Where a statute of limitation is pleaded to the whole of a right of action, only a part of which is old enough to be barred there- by, a demurrer to the plea will be sustained, because a plea which is bad in part is bad altogether." 485. A demurrer to the replication will be proper in an action at law, wherein the declaration alleges infringement before June 22, 1874, of a patent which expired more than six years before the beginning of the action, and wherein a plea sets up the national statute of limitation, and wherein the replication alleges disability of the plaintiff. Such a de- murrer will result in a judgment for the defendant, because disability is not a legal excuse for delay to sue, in respect of the national statute of limitation. 486. A joinder in demurrer is the proper response to such a pleading in a patent action, as well as any other. If a plain- tiff attempts to demur to a demurrer, or refuses to join issue of law upon it, he thereby discontinues his action, and if a de- fendant does so he discontinues his defence.' 487. The trial of an action at law for infringement of a patent may be by a jury, or by a judge, or by a referee. Tho 1 Sections 440 to 477 of this book. 3 Gould's Pleadings, Chap. IX. 1 1 Chitty on Pleading, 546.- Sec. 33 ; 1 Chitty on Pleading, CG'J. CHAP. XVIII.] ACTIONS AT LAW. 347 first of these sorts of trial is the only proper one, except in cases where both parties agree to substitute one of the others. Cases of the kind may be tried by the judge where the parties file with the clerk, a stipulation in writing waiving a jury ; ' and trial by a referee appointed by the court, with the consent of both parties, is a mode of trial fully warranted by law. 4 488. Trial by jury must, in the absence of contrary con- sent by the parties, be by a jury of twelve men. Unanimity is necessary to a verdict of a jury, in a Federal court, even in California or Nevada ; though the statutes of those States provide, that in their courts, a legal verdict may be found when three fourths of the members of a jury agree. The laws of those States on that point are not covered by Section 721 of the Revised Statutes, and so made rules of decision in Federal courts ; because the Federal Constitution otherwise provides. That provision is found in its seventh amendment, and in the following language : "In suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved. " It is true that unanimity was not necessary to the verdicts of juries in England till after the reign of Edward the First, 3 and that it was never required in Scotland. 4 But the kind of " trial by jury," known in England and in the United States when the seventh amendment was proposed by Congress, 5 and when it was ratified by three fourths of the States, 8 is doubtless the kind of trial guaranteed by that amendment. Therefore no law providing for any other kind of trial by jury can be en- forced in a United States court. 489. The practice in actions at law in the Federal courts is not uniform throughout the United States. There are no general rules governing the Circuit Courts when sitting as law courts, though there is such a system prescribed for them 1 Revised Statutes, Section 649. 4 Barririgton on the Statutes, Chap. 9 Heokers v. Fowler, 2 Wallace, 29, p. 20 ; 17 & 18 Victoria, Chap. 123, 1864. 59 ; 22 & 23 Victoria, Chap. 7 ; 31 & 3 Bracton, Liber IV. Chap. 19 ; 32 Victoria, Chap. 100, Sec. 48. Fleta, Liber IV. Chap. 9 j Britton, & September 25, 1789. Liber II. Chap. 21. November 3, 1791. 343 ACTIONS AT LAW. [CHAP. XVIII. when sitting in equity. On the law side, each Circuit Court is governed, in matters of practice, by the laws of the State in which it is established, so far as those laws are applicable ; ' and on points where no law exists, it is governed by rules or customs of its own making or observance. No Act of Con- gress is necessary to enable United States courts to make and enforce its own rules of practice. It is only necessary that such rules be not repugnant to the laws of the United States. 3 490. The rules of evidence which are used in the trial of patent causes, are the ordinary rules of the common law, as modified by the statutes of the particular States in which such trials occur, 3 and as adapted to the circumstances of patent litigation by the decisions of the United States courts. 491. Evidence to support his declaration, must of course be introduced by a plaintiff in a patent suit, before the defend- ant can be called upon to prove any defence. The first item of such evidence consists of the letters patent sued upon, or of a written or printed copy of the same authenticated by the seal and certified by the Commissioner or the Acting Commis- sioner of the Patent Office. 4 Either the letters patent, or such a copy thereof, is prima facie evidence of the validity of the letters patent, unless it appears on its face not to be such a form of document as the statute prescribes. Some of the adjudicated cases which touch this subject, apply the rule to novelty only, and not to validity in general. 5 The reason of the rule, as far as it relates to novelty, is twofold. A pre- sumption of novelty arises from the inventor's statutory oath that he verily believes himself to be the first and original inventor ; * and a like presumption arises from the fact that the Commissioner, before he grants a patent, is bound to cause an examination to be made of the alleged new inven- 1 Revised Statutes, Section 914. 4 Revised Statutes, Section 892. s Heckers v. Fowler, 2 Wallace, B Blanchard v. Putnam, 8 Wallace, 123, 1864. 420, 1869 ; .Seymour v. Osborne, 11 3 Vance v. Campbell, 1 Black, 427, Wallace, 516, 1870 ; Mitchell u. 1861 ; Haussknecht v. Claypool, 1 Tilghman, 19 Wallace, 287, 1873. Black, 431, 1861 ; Wright v. Bales, Revised Statutes, Section 4892. 2 Black, 535, 1862. CHAP. XVIII.] ACTIONS AT LAW. 349 tion ; l which examination, in practice, includes all relevant prior patents and printed publications, of which the Patent Office contains any evidence. Now the first of these grounds of presumption does not exist in regard to any quality of validity except novelty, and except regularity in point of sole or joint application for a patent for a sole or joint invention. The second ground is, however, a much stronger foundation for a presumption of validity in other respects, than it is for a pre- sumption of novelty. The Commissioner of Patents has no means of determining how the novelty of an invention may be affected by things of which the Patent Office contains no record, and of which his own narrow experience contains no recollection. If he understands the law, he has, on the con- trary, every means of deciding whether a particular application for a patent covers a statutory subject of such a grant. So also he can pass upon the application in point of invention, with more certainty than he can pass upon it, in point of novelty. He has nearly every means to determine the utility of -the thing covered thereby, and thus to negative the ' fourth defence. It is clear that no outside evidence need be introduced by a plaintiff, to anticipate either the fifth or the sixth defence, because the law does not favor an abandon- ment, and throws upon a party who seeks to obtain the benefit of a forfeiture, the burden of proving it beyond a reasonable doubt. 5 Letters patent are therefore primafade evidence of their own validity, as against either of these defences. The same thing is true of the seventh defence, though for a differ- ent reason. If a patent is obnoxious to this defence, it is be- cause the Commissioner of Patents made an error in granting it, similar to that which he makes when he grants a reissue for a different invention from any indicated, suggested or de- scribed in the original. But there is always a presumption of law against the hypothesis of such an error ; and that presump- tion prevails until such an error is proved. 3 The fact that the statute expressly provides a particular method, in which 1 Revised Statutes, Section 4893. 8 Seymour v. Osborne, 11 Wallace, 1 McCormick v. Seymour, 2 Blatch. 516, 1870. 256, 1851. 350 ACTIONS AT LAW. [CHAP. XVin. the eighth defence may be interposed bj a defendant, 1 suf- ficiently shows, that until it is set up and proved, the plaintiff need not attempt to disprove it, further than by the introduc- tion of his letters patent. As against the ninth and tenth defences, the letters patent are also sufficient prima facie evidence ; because both those defences are contradicted by the inventor's oath accompanying the application, even more positively than want of novelty is contradicted by that oath." No inventor can positively know whether his invention is absolutely novel, and therefore his oath covers only his belief on that point ; but every inventor knows the facts relevant to whether he was the sole inventor, or only a joint inventor, of the process or thing covered by his application. Letters pat- ent appear to be prima facie evidence of their own validity, as against the eleventh defence, for the same reason which makes them so as against the eighth. Relevant to the twelfth and thirteenth defences, the Commissioner's decision in granting a patent, is entitled to far more weight than it is on the question of novelty, because he has all the data for forming an opinion about the fulness and clearness of a writ- ten document before him, but not all the data for an opinion touching the novelty of what that document sets forth. It follows that the resulting presumption of validity, in respect of these defences, is even stronger than the presumption of novelty. The fourteenth defence is based on partial want of novelty, and as letters patent are undoubtedly prima facie evidence of entire novelty, it follows that they constitute prima facie evidence that no disclaimer is needed. The conclusion of the whole matter, therefore, is that an original letters patent is prima facie evidence of its own entire validity.' 492. Reissue letters patent are also prima facie evidence of their own validity, on all of the three points which are in- volved in that question. They are so in respect of the fifteenth defence ; because the fact that the Commissioner assumed 1 Bevised Statutes, Section 4920. * Konold v. Klein, 3 Bsnn. A Ard., * Bevised Statutes, Section 4892. 226, 1878. CHAP. XVlII.] ACTIONS AT LAW. 351 * jurisdiction, by treating the original letters patent as a proper subject for a reissue, is at least prima facie evidence that he had jurisdiction. 1 They are so in respect of the sixteenth defence ; because the presumption is that the Commissioner knew the law, and, knowing it, would not grant a broadened reissue after a long lapse of time from the date of the original. They are so in respect of the seventeenth defence, because the presumption is that the Commissioner would not violate the statute by granting a reissue for a different invention from that shown in the original letters patent. 2 493. An extension of a patent is prima facie evidence of its own validity as against the eighteenth defence, on the same ground that a reissue is, as against the fifteenth. That ground is the presumption that the Commissioner of Patents will not assume jurisdiction in any case not provided for by law. 3 494. It is an undoubted presumption of law, that letters patent, which appear on their face to be in full force, are so in fact. Such a document is therefore prima facie evidence that it neither has been repealed by a decree of court, nor has expired because of the expiration of some foreign patent for the same invention. It follows that neither the nineteenth or twentieth defence need be anticipated by a plaintiff, when introducing his prima facie evidence. 495. After introducing the letters patent in evidence, unless the plaintiff is himself the patentee, his next step is to prove his title to the right, upon the infringement of which the action is based. To this end he must prove himself to be the assignee of the patent ; or at least a grantee under the patent, as to the territory wherein the alleged infringement occurred. He may do either of these things, by introducing in evidence the original assignments or grants which constitute his chain of title, after having proved them according to the rules of the common law. It has also been repeatedly decided by Circuit Courts, that duly certified copies of the Patent 1 Brooks v. Bicknell, 3 McLean, 1873. 258, 1843. a Brooks v. Bicknell, 3 McLean, ! Klein v. Russell, 19 Wallace, 433, 258, 1843. 352 ACTIONS AT LAW. [CHAP. XVIII. Office records of such assignments or grants, are competent primary evidence of the original documents themselves. 1 These three decisions have been generally acquiesced in for more than twenty years, and few rules of patent law have been more frequently made the basis of action by counsel and by courts than the doctrine just mentioned. But it hardly seems justified by the statute upon which it is based," and may even yet be overthrown by the Supreme Court. 496. It is not necessary for any plaintiff to prove in his prima facie evidence that the defendant has no license or release with which to defend ; 3 nor can it be required of him to testify that he never made or sold any specimen of the in- vention without marking it " patented. " Evidence relevant to the twenty-first, twenty-third, and twenty-fourth defences, must therefore be taken by the defendant, before the plaintiff can be called upon to disprove them. 497. Proof of the making, selling, or using, by the defend- ant, of a specimen or specimens of a processor thing which the plaintiif claims is covered by his patent, constitutes the next step to be taken in proving a prima facie case. This point is often covered by a stipulation of the parties. Defendants are generally wise when they make such stipulations, because any attempts to conceal the nature of their doings, are likely to prejudice the welfare of their defences. But in cases where the defendants have no refuge but concealment, the point of proof may be one of difficulty, for courts of law have no power to order inspections of a defendant's works ; * though the defendant may be called as a witness, and compelled to describe what he has done. 5 Where a defendant cannot be relied upon to testify fairly and fully, the plaintiff must secure other evidence ; for it is necessary to a verdict in an action at law 1 Brooks v. Jenkins, 3 McLean, Sec. 4, p. 118. 436, 1844 ; Purker r. Haworth, 4 3 Fischer v. Hayes, 6 Fed. Rep. 79, McLean, 370, 1848 ; Lee v. Blandy, 1881. 2 Fisher, 91, 1860. * Parker v. Bigler, 1 Fisher, 287, s Revised Statutes, Sec. 892 ; 16 1857. Statutes at Large, Ch. 230, Sec. 57, 5 Roberts v. Walley, 14 Fed. Rep., p. 207 ; 5 Statutes at Large, Ch. 357, 1G9, 1882. 6HAP. XVIII.] ACTIONS AT LAW. 353 for an infringement of a patent, that both the nature and the extent of that infringement be shown to the jury, by satis- factory proof. Evidence of the nature of a defendant's doings, is the first element of evidence of infringement ; and evidence of their extent, is an indispensable part of the neces- sary evidence of damages. 498. Evidence of infringement is completed with evidence of the defendant's doings, if what he did was obviously and unquestionably identical with what is covered by the patent in suit. 1 But that is not often the case. Differences are generally apparent ; and where they are not obviously immaterial, it is necessary to introduce expert testimony to show that they are really of tiiat character, and to show that the defendant's doings actually did constitute an infringement of the plaintiff's patent. Experts in patent cases are mainly of two kinds : mechanical and chemical experts. A mechanical expert is a person who has extensive theoretical and practical knowledge of mechanics ; and a chemical expert is a person who has like knowledge of chemistry. The opinions of such experts are admissible upon the points of fact to which they are relevant ; but in order to have much weight, they must be accompanied by statements of good reasons upon which they are based." In deciding between contradictory expert testimony, juries should consider the respective reasons, ability, knowledge, and fairness of the experts. 3 To judge according to their number or their fame would be unsafe. The wealthier litigants are generally those who employ the more numerous and the more 1 Jennings v. Kibbe, 10 Fed. Rep., 298, 1857 ; Carter v. Baker, 1 Saw- 669, 1882 ; Barrett v. Hall, 1 Mason, yer, 512, 1871 ; Spaulding v. Tucker,, 471, 1818. Deady, 649, 1869 ; Gaboon v. Ring, * United States Annunciator Co. 1 Clif. 592, 1861 ; Cox r. Griggs, 1 v. Sanderson, 3 Blatch. 184, 1854 ; Bissell, 362, 1861 ; Conover v. Roach, Livingston v. Jones, 1 Fisher, 521, 4 Fisher, 12, 1857 ; Whipple v. Mfg. 1859 ; Conover v. Rapp, 4 Fisher, Co. 4 Fisher, 29, 1858 ; Conover v. 67, 1859. Rapp, 4 Fisher, 57, 1859 ; Water- 3 Johnson v. Root, 1 Fisher, 351, bury Brass Co. v. New York Brass 1858 ; Many v. Sizer, 1 Fisher, 17, Co. 3 Fisher, 43, 1858 ; Bierce v. 1849 ; Hudson r. Draper, 4 Fisher, Stocking, 11 Gray (Mass.) 174, 1853. 256, 1870 ; Page v. Ferry, 1 Fisher, 354: ACTIONS AT LAW. [CHAP. XVIH. expensive expert witnesses ; but it is not always the wealthier litigant who is right in a controversy, nor always the more famous expert who is right in his opinion. The carefully digested views of a young and studious scientist, may often be more nearly true than the more hastily formed opinion of a more experienced man. 499. No expert can know whether a particular thing, done or made by a defendant, is the same as any thing covered by a particular patent, until he ascertains what that patent covers. But the latter questjon is one of construction for the court, and not a question of evidence, to be sworn to by an expert, and decided by the jury. In the regular course of proceedings in trials at la,w, as well as in hearings in equity, the construc- tion of the patent is not announced by the judge till after the evidence is taken. This practice makes it proper to put hypothetical questions to expert witnesses. The hypothesis in such a question, is one which embodies that construction of the patent upon which the examining counsel thinks it both safe and sufficient to rely. If, when charging the jury, the judge gives a different construction from that embodied in the hypothetical question, then the answer to that question will be seen to be immaterial, and the jury will do right to disregard it. Examining counsel ought therefore to be very certain that his hypothetical construction is the true one ; or otherwise, to put as many hypothetical questions as there are probable favor- able constructions. Doing the latter, he may have a favorable answer upon which to argue to the jury, if he secures from the judge a construction which corresponds with either of his hypothetical questions. A statement of a witness, that a particular thing does or does not infringe a particular patent, is inadmissible in evidence ; because that statement includes a construction of the patent, and construction of patents is the duty of courts, and not of experts. 500. Though not permitted to testify to the construction of a patent,' experts are sometimes called upon to testify to facts which positively control that construction. The follow- 1 Waterbury Brass Co. v. New York Brass Co. 3 Fisher, 54, 1858. CHAI>. XVIII.] ACTIONS AT LAW. 355 ing are examples of such cases. Where the state of the art is the subject of inconsistent evidence, and where the construc- tion of the patent depends on what is the fact in that regard ; the judge will not charge the jury that the patent means thus and so, but will tell them that if they find the state of the art to be so and so, then the patent is entitled to such and such a construction. 1 In cases of this kind, it will frequently occur that the jury, in deciding upon the state of the art, must re- ceive information from experts relevant to the mechanical nature of prior things, as well as information from other sources relevant to the prior existence of those things. All questions of identity of things are questions for the jury, in an action at law/ and are therefore proper to be testified about by experts. Where a patent covers such of the things de- scribed, as perform a particular function, it is the business of the jury to decide, and therefore proper for an expert to testify, which those things are. 3 501. The cross-examination of experts, cannot extend to inquiries into the characteristics of things not relevant to the case, put to them for the purpose of testing their knowledge or their fairness ; because if the answers appeared to be undeni- ably correct, they would be wholly immaterial, and if thought to be erroneous they could be shown to be so, only by the testimony of others, who might themselves be the mistaken ones. To allow such a question, would thus operate to intro- duce an immaterial issue of fact into a case, and to draw the attention of the jury away from the issues of the pleadings. 4 502. The last part of a plaintiff's prima facie evidence, consists in proof of the amount of his damages, sometimes supplemented by evidence tending to show that a judgment ought to be entered for an amount greater than the actual damages sustained by him. 5 The subject is mentioned in this connection for the sake of symmetry ; but it is so large that 1 Bnrdell v. Denig, 92 U. S. 722, 1852. 4 Odiorne v. Winkley, 2 Gallison, s Tyler v. Boston, 7 Wallace, 327, 51, 1814. 8 Bevised Statutes, Section 4919. 8 Silsby v. Foote, 14 Howard, 218, 356 ACTIONS AT LAW. [CHAP. XVIII. it constitutes the theme of a separate chapter of this book. To that chapter, recourse may be had for detailed information upon the point. 503. The next part of a trial is the introduction of evidence by the defendant to sustain his defences. The pos- sible defences in patent cases are twenty-seven in number. In prior sections in this chapter, they are consecutively num- bered for purposes of easy reference, and are treated in respect of the pleadings which they respectively require, and the re- sults which they respectively produce in patent actions at law. It is now convenient to set forth, in the same order, some of the leading points of the law of evidence applicable to each. 504. The first defence generally requires evidence to show that the terms of art or science which are used in the patent have such a meaning that the court is bound to construe the patent to be one for a principle, or for something other than a process, machine, manufacture, composition of matter, or design. This general statement is ventured, though the cases in which patents have been assailed with the first defence are so few, that but little law is established on the subject. 505. The second defence may sometimes be supported by facts of which the court will take judicial notice. 1 But evidence to show the state of the art, is often required to show want of invention. A patent granted for an implement of agriculture, consisting of a hoe handle with a hoe on one end and a rake on the other, would be void for want of invention, even if both new and useful. 2 The court would take judicial notice of the prior existence of handles having hoes attached thereto, and of other like handles having rakes fastened at one end ; and on the basis of that judicial notice, would pronounce such a patent to be wholly invalid. A patent for a particular alleged combination, in a rare and complicated machine, may also be open to precisely the same sort of objection ; while the facts upon which it rests in the particular case, may be wholly 1 Brown v. Piper, 91 U. S. 37, * Reckendorfer v. Faber, 92 U. 8. 1875 ; Slawson v. Railroad Co. 107 347, 1875. U. S. 649, 1882. CHAP. XVIII.] ACTIONS AT LAW. 357 unknown to people generally, and wholly unknown to judges who hear patent causes, though well understood by certain classes of mechanics. In the latter case, it is necessary to in- troduce evidence of those facts in order to show want of in- vention. Such evidence may consist of proof of the prior existence of the parts of the alleged combination, and proof of the fact that their union in the machine constitutes not a real combination, but an aggregation only. This statement of the considerations which show a necessity for evidence to prove lack of invention, when that lack is based on the rule that aggregation is not invention, will also furnish the key to in- quiry when that lack is based on any other of the various rules on that subject. 506. The third defence, and the facts which support it, are explained at large in the third chapter of this book. In this connection, it is only necessary to explain the kinds of evidence by which those facts may be proven, and to state the special rules which govern the weight of such evidence. Where novelty is duly sought to be negatived by prior United States patents, duly certified copies of those patents are admissible ; ' and it is a general practice among patent lawyers to waive the certificate, where a printed copy from the Patent Office is presented by opposing counsel. Such printed copies are really more reliable than any certified manuscript copy ; because they are generally printed from the same form as the original letters patent, and are therefore absolutely cor- rect ; while there is always a possibility of error in copying a document with a pen. But the Patent Office does not fur- nish printed copies of patents which were granted prior to 1866 ; and as to those patents, a certified manuscript copy is the best to be had. The certified copies of letters patent, which are admissible in evidence, include not only such in- dividual copies as are furnished to private persons on payment of the proper fees ; but also the certified bound volumes of copies, which are gratuitously distributed by the Commissioner of Patents to all the State and Territorial capitols, and to all 1 Kevised Statutes, Sec. 892. 358 ACTIONS AT LAW. [CHAP. XVIIL the United States District Court clerk's offices, except those which are located at the capitals of the States and Territories. 1 Where prior foreign patents are duly pleaded to negative novelty, they may be proven prima facie, by duly certified copies of those copies thereof, which are kept in the United States Patent Office. 4 If plenary proof of foreign letters pat- ent is required, it can be made by producing a copy thereof, duly certified by that officer of the foreign government which issued the patent, who corresponds to the Commissioner of Patents in the United States. 3 Where an error creeps into a certified copy of any letters patent, it may be corrected by another and more carefully compared certified copy from the same office. 4 Letters patent, to be admissible, must agree in name and date with the statements in the pleadings, in proof of which they are offered. 5 507. Prior printed publications must be proven by the in- troduction of a specimen of the printed thing which is relied upon, and by satisfactory evidence that it was published be- fore the date of the patent in suit. Parol testimony of the contents of such printed matter is generally inadmissible.' The testimony of a person, that the printed thing produced was published before the date of the invention in suit, if believed by the jury, would be sufficient evidence on that point. What evidence short of that in convincing force, would answer the purpose in hand, has not been judicially set- tled. Printed publications are not generally evidence of the truth of the statements which they contain. 7 But where a book or public periodical appears to have been published in a specified year, or on a specified day, and where it contains matter which furnishes collateral evidence of the genuineness of the date, and where it is free from the suspicion of having been changed after it was put forth, it will probably be re- 1 Revised Statutes, Sec. 490. 5 Bellas v. Hays, 5 Sergeant be covered by the patent in suit ; it is always advisable, and gen- erally necessary, for the defendant to introduce evidence tend- ing to show non-infringement, if he means to insist upon that defence. 3 Evidence of this sort may consist of the testimony of experts who are acquainted with the letters patent in suit, and with the doings of the defendant, and are of opinion that those doings are substantially different from everything which: appears to be secured by the letters patent, and can give an ; intelligent reason for that opinion. This testimony, like all other testimony of experts on questions of infringement, is necessarily based on hypothetical constructions of the patents in suit, and is therefore to be disregarded, if the judge finds those hypothetical constructions to be substantially erroneous.. "Whether the fact that the defendant conformed his doings to a junior patent is admissible as tending to show non- infringement of the patent in suit, is a question which the Supreme Court once decided in the affirmative, 4 and after- ',Prouty v. Buggies, 16 Peters, 3 Bennet v. Fowler, 8 Wallace, 336, 1842. 447, 1869. j Railway Co. v. Sayles, 97 U. S. 4 Corning v. Burdco, 15 Howard,, 654, 1878. 252, 1853. 370 ACTIONS AT LAW. [CHAP. XVIII. ward in the negative. 1 The reason of the matter is with the later decision, because a thing may be a patentable improve- ment on a prior thing, at the same time that it is a clear in- fringement of a patent for that thing. 533. The twenty-sixth defence requires to be proved as pleaded. Where it depends upon estoppel in pais, it may be proved by parol, or by the production of documents, ac- cording as the ground of the estoppel consists of things done or words spoken, or consists of words which were committed to writing. Where the defence depends upon estoppel by deed, the document must be produced or otherwise proved ac- cording to the rules of evidence applicable to such cases ; and where it depends upon estoppel by record, or res judicata, the record must be proved in accordance with the laws govern- ing such evidence. 534. The twenty-seventh defence seldom requires any evicjfince to sustain it, because the Federal courts take judicial notice of the statutes of limitation ; a and because the plaintiffs pleadings and proofs, when taken together, will generally show when the infringement sued upon was committed. But if the plaintiff's presentation of the case leaves the latter point un- certain to such an extent as to affect the question of the opera- tion' of a statute of limitation, the burden is then cast upon the defendant, to prove that part or all of the infringement is old enough to be barred by the statute which he pleaded.* 535. Testimony in actions at law for infringements of patents may always be taken orally in open court ; and it may be taken by depositions in writing where the witness lives more than one hundred miles from the place of trial, or when he is bound on a voyage at sea, or is about to go out of the United States, or out of the judicial district in which the case is to be tried, or to a greater distance than one hundred miles from the place of trial, before the time of trial ; or when he is ancient and infirm. The sorts of magistrates before whom such a dep- 1 Blanchard v. Putnam, 8 Wallace, Wallace, 121, 1869. 420, 1869. 3 Russell v. Barney, 6 McLean, * Pennington v. Gibson, 16 How- 577, 1855. *rd, 79, 1853 ; Cheever u. Wilson, 9 CHAP. XVm.] ACTIONS AT LAW- 371 osition may be taken, are judges of any United States court ; judges of any supreme, superior, or county court, or court of common pleas of any of the United States ; commissioners of United States circuit courts ; clerks of United States circuit or district courts ; mayors or chief magistrates of cities ; and notaries public. If any such magistrate is counsel or attorney for either party, or interested in the event of the cause, he is disqualified from acting. Before such a deposition is taken, reasonable notice thereof must be given in writing by the party intending to take it, or his attorney of 'record, to the op- posite party, or his attorney of record, as either may be nearest, and that notice must state the name of the witness, and the time and place of taking the deposition. 1 The formalities to be observed in taking and transmitting such depositions are prescribed in Sections 864 and 865 of the Revised Statutes ; and they must be strictly complied with, in order to make such depositions admissible as against proper objections. Indeed, no such deposition is admissible in any event, unless it appears to the satisfaction of the court, that the witness is dead, or gone out of the United States, or to a greater distance than one hundred miles from the place where the court is sitting, or that, by reason of age, sickness, bodily infirmity, or imprison- ment, he is unable to travel and appear at court. 2 Where the witness testified in his deposition to the then existence of the fact which authorized its taking, that fact is presumed to exist at the time the deposition is offered in evidence, and in the absence of contrary proof, the deposition itself will satisfy the court that it is entitled to be admitted. Most objections to depositions, in order to be efficacious, must be made before the depositions are received in evidence ; for when introduced with the acquiescence of the opposite party, they cannot afterward be excluded on the ground that they were not taken in accordance with the rules prescribed therefor. 8 But where evidence is pertinent to either of several possible defences, one or more of which were pleaded, and one 1 Revised Statutes, Section 863. 8 Evans r. Hettich, 7 Wheaton s Revised Statutes, Section 865. 453, 1822. 372 ACTIONS AT LAW. [CHAP. or more of wliich were not pleaded by tlie defendant, the fact that the evidence was not objected to when taken or admitted, doe* not make it admissible in support of any defence which was not pleaded. ' 536. The judge may direct the jury to return a verdict for the defendant, where it is entirely clear that the plaintiff cannot recover, but not otherwise.* 537. Instructions to juries embody all the law that is ap- plicable to the material facts in evidence. In ascertaining that law, the judges resort to the statutes of the United States, and to the decisions of the United States Supreme Court ; and where further information is required, they examine or call to mind the decisions of the Circuit Courts of the United States, for they are inferior in authority to those of the Supreme Court alone. 3 But judges are not bound to conform their instructions to any statements of law contained in any opinion of any court, unless that statement was strictly appli- cable to the case then before the court which made it. 4 The Supreme Court has sometimes decided cases, after full argu- ment, quite contrary to its own previous obiter dicta ; and the circuit court decisions contain hundreds of passing re- marks which cannot be harmonized with the positive decisions of the supreme tribunal. The opinions of the best text- writers are sometimes more likely to be followed by the Federal courts, than are the dicta of the judges of those courts, because the best legal authors consider their writings more carefully than the judges appear to consider their dicta, and because neither of these kinds of statements have any more weight than the reasons upon which they are respectively based. Instructions should not embody the opinions of the judges on any issue of fact. * To guard against the observed tendency 1 Zane v. Soffe, 5 Bann. & Ard. 4 Day v. Kubber Co., 20 Howard, 284, 1880. 216, 1857 ; Day v. Stellman, 1 Fisher, * Klein v. Russell, 19 Wallace, 463, 487, 1859. 1873. k Turrill v. Railroad Co., 1 Wallace, J Washburn v. Go-old, 3 Story, 157, 491, 1863. 1844. CHAP. XVIII. ACTIONS AT LAW. 373 in judges to overlook this rule in patent cases, it is prudent to require all instructions to be given in writing, that being a requirement which counsel have a right to make in the State courts of most or of all of the States, and that being a point of practice which is consistent with the nature of an action of trespass on the case, and therefore one to be followed in patent actions in the Federal courts. 1 The danger of irregularity in instructions is much lessened by putting them in writing ; and the facilities for correcting such as do occur are materially increased thereby. While he is bound not to tell the jury how to decide any issue of fact, the judge will tell them what issues of fact they are to decide, and those are the issues in the pleadings, and not some other issue which the judge may think is the one upon which the merits of the case really depend. 2 538. The verdict in a patent action will be for the plain- tiff, if every defence except non-infringement fails, and if that fails as to any one claim of the letters patent. 3 So also, the plaintiff is entitled to a verdict, where every defence fails except the sixteenth and seventeenth, and where those defences lack application to one or more of the claims shown to have been violated. 4 And he is also entitled to a verdict where the only successful defence is the eighteenth, if his action is based partly on the first term of the patent, and if that term is proven to have been infringed by the defendant. So also, if the twenty-second, twenty-third, or twenty-fourth defence is the only successful one, and if that is successful only as to part of the alleged infringement, the plaintiff will be entitled to a verdict as to the residue ; and the same thing may be true of the twenty-sixth or of the twenty-seventh defence. 539. A new trial may be obtained by the defeated party, if the jury disregarded the instructions of the judge ; 5 or failed 1 Revised Statutes, Sections 914 4 Gage v. Herring, 107 U. S. 640, arid 4919. 1882 ; Gould v. Spicer, 15 Fed. Rep. 9 Grant v. Raymond, 6 Peters, 244, 344, 1882 ; Cote v. Moffltt, 15 Fed. 1832. Rep. 345, 1883. 1 Waterbury Brass Co. v. New * Tucker v. Spalding, 13 Wallace, York Brass Co., 3 Fisher, 43, 1858. 453, 1871. 374: ACTIONS AT LAW. [CHAP. XVm. to correctly apply them to the issues of the case ; ' but not where the only error complained of is an alleged wrong deci- sion of such an issue, unless it was decidedly against the weight of evidence.* Excessive assessment of damages, even where it is undeni- ably so, does not always entitle the defendant to a new trial. Such an error may be cured by the plaintiff remitting such a sum as the judge thinks constitutes the excess, in all cases where he thinks that the error of the jury arose from inadver- tence ; but when the circumstances of the case clearly indicate that the error arose from prejudice, or from reckless disregard of duty, on the part of the jury, a new trial will be granted.* But no excessive verdict can be corrected by the Supreme Court, unless the nisi prius judge made some error which entitles the defeated party to a venire facias de novo.* Errors made by judges may also entitle a party to a new trial, but no such error will have that effect unless it was ex- cepted to at the time it was committed ; nor where it consisted in erroneous admission of evidence, which the subsequent course of the trial rendered nugatory. 5 So also, where the error of the judge consisted in erroneous instructions relevant to damages, the plaintiff may avoid a new trial by consenting that the verdict be reduced to nominal damages and costs.' Newly discovered evidence may also furnish a good ground for granting a new trial ; but not where that evidence might, with due diligence, have been obtained before the former trial ; 7 nor where it is merely cumulative. 8 But evidence is 1 Johnson v. Boot, 2 Clif. 108,1862. 108, 1862 ; Russell v. Place, 9 Blatch. 8 Alden v. Dewey, 1 Story, 336, 175, 1871. 1840 ; Stimpson v. Railroads, 1 Wai- * Hogg v. Emerson, 11 Howard, lace, Jr. 164, 1847 ; Allen v. Blunt, 607, 1850. 2 Woodbury & Minot, 121, 1846 ; 6 Allen v. Blunt, 2 Woodbury 4 Aiken v. Bemis, 3 Woodbury & Minot, 121, 1846. Minot, 348, 1847 ; Wilson v. Janes, Cowing v. Rumsey, 8 Blatch. 36, 3 Blatch. 227, 1854 ; Bray v. Harts- 1870. horn, 1 Clif. 538, 1860 ; Roberts v. ' Washburn v. Gould, 3 Story, 122, Schuyler, 12 Blatch. 448, 1875. 1844. s Stafford v. Hair-Cloth Co. 2 Clif. 8 Ames v. Howard, 1 Sumner, 482, 83, 1862 ; Johnson r. Root, 2 Clif. 1833. CHAP. XVIII.] ACTIONS AT LAW. 375 not merely cumulative, where it refers to facts not before agitated, though it may refer to defences which, in the former trial, were based on other facts. ' A party moving for a new trial upon the ground of alleged newly discovered evidence, must succeed or fail on the strength or weakness of the case as it is disclosed in his affidavits, and in the answering affidavits of the other party ; for the moving party is not permitted to rebut the latter ; nor will he be entitled to a new trial, if the opposing affidavits make out a strong case against him. 2 When a new trial is granted on the ground of newly discovered evi- dence, the terms usually are, that the costs of the former trial must first be paid by the applicant. 3 540. Trials by a judge without a jury require to be so managed that the issues of law and the issues of fact are kept entirely distinct ; for his decision on the former are re viewable by the Supreme Court, while his finding of fact has the same operation as the verdict of a jury. 4 If the finding of the judge be a general one, it is conclusive on all issues of fact, and is also conclusive on all questions of law, except those which arise upon the pleadings, and those which the bill of exceptions specifically presents as having been ruled upon and excepted to in the progress of the trial. 5 If the finding of the judge be a special one, it will still be conclusive on the facts found ; but the sufficiency of those facts to support the judgment will be open to review in the Supreme Court.' Where the judge simply finds for the defendant, and enters a judgment accordingly, that judgment can be taken to the Supreme Court for review, only in the regular common law method of a bill of exceptions and a writ of error, and only on pure questions of law. 7 Where the judge finds as a fact, that the patent is void for want of novelty, or that the defend- ant has not infringed it, and thereupon enters a judgment for 1 Aiken v. Betnis, 3 Woodbury & * Revised Statutes, Section 649. Minot, 358, 1847. * Insurance Co. v. Sea, 21 Wallace, 9 Ames v. Howard, 1 Samner, 491, 160, 1874. 1833. Revised Statutes, Section 700. 3 Aiken v. Bemis, 3 Woodbury & ' Revised Statutes, Sections 649 Minot, 358, 1847. and 700. 376 ACTIONS AT LAW. [CHAP. XVIII. the latter, it is undeniable that the fact so found is sufficient to support that judgment. In arriving at his opinion, the judge may have misunderstood or misapplied the tests of novelty, or of infringement, but still his finding is conclusive ; because the Supreme Court is authorized to examine nothing but the sufficiency of the facts found. 1 But if the judge finds that A. B. invented, made, and used a certain described thing in the United States, prior to the invention of the patentee, or that the defendant made, used, or sold only a cer- tain described thing during the life of the patent, and there- fore renders a judgment for the defendant ; that judgment will be reversed by the Supreme Court on a writ of error, if that court is of opinion that the thing invented, made, and used by A. B. did not negative the novelty of the patent, or is of opinion that the thing made, used, or sold by the defendant did really infringe the patent in suit. 3 These illustrations of the practice in trials by a judge without the aid of a jury, show that where special findings of facts are adopted as the method of laying a foundation for a review of the case by the Supreme Court, the finding ought to relate to the fundamental facts of the case, and not merely the conclusions of fact which are deducible therefrom. 541. Trial by referee may be instituted by an entry of the clerk of the court, made at the request of the parties, sim- ply indicating that the case is to be referred to the person or persons named, as referee ; or it may be ordained by a stipu- lation in writing, signed by the parties or their attorneys and filed in the case. When that is done, a rule may be issued, or an order of court may be entered, referring the case to the referee indicated by the parties, and directing him to hear and determine all the issues thereof. It thereupon becomes the duty of the referee to hear the parties, and then to decide the controversy and make a report to the court. The report may be special, setting forth the details of the evidence upon which it is based, or it may be general, giving only the conclusions 1 Jennisons v. Leonard, 21 Wai- 147, 1874 ; Insurance Co. v. Sea, 21 lace, 307, 1874. Wallace, 160, 1874. 8 French v. Edwards, 21 Wallace, CHAP. XVIII.] ACTIONS AT LAW. 377 to which that evidence carried the mind of the referee. To that report, either party may except in writing, and upon the hearing of those exceptions, the court may adopt or reject the report and enter judgment accordingly, or it may recommit the report to the referee with further directions. 1 Such is substantially the outline of the trial by referee, which is delineated in the decision just cited. Inasmuch as that form of trial is not provided for by any United States statute, its details are regulated by the laws of the particular State in which such a trial is had. 8 Recourse must therefore be had to those laws for sundry points of information relevant to the methods of taking testimony before referees ; the time when referees' reports must be made ; the weight attached to such reports on issues of fact ; and the proper practice by means of which to secure the judgment of the court upon reviewable points. 542. Judgments follow verdicts of juries, findings of judges, or reports of referees ; unless those verdicts are set aside, those findings reconsidered and modified, or those reports rejected or recommitted. It is not the practice of the United States Circuit Courts, to require a rule for a judgment to be entered in any case. Judgments are entered by the clerk of the court under a special or general authority from the judge, and where so entered are binding as the act of the court. 3 The circumstances which justify courts in entering judgments in patent cases, for any sum above the amount of the verdict, finding, or report, but not exceeding three times the amount thereof, are explained in the chapter on damages. That the court has the same power in this particular, in cases where the damages are ascertained by the finding of the judge, or by the report of a referee, that it has in cases where they are ascertained by the verdict of a jury, is a point which has not been judicially decided, but is one which can hardly be doubted. 1 Heckers v. Fowler, 2 Wallace, and 914. 132, 1864. "Hectors v. Fowler, 2 Wallace, 'Revised Statutes, Sections 721 132, 1864. 378 ACTIONS AT LAW. [CHAP. XVIII. 543. Costs are recoverable by all plaintiffs \vho secure judgments for infringements of patents ; ' except where it ap- pears on the trial that one or more of the claims of the letters patent are void for lack of being the subject of a patent, or for want of invention, or for want of novelty, and does not appear that the proper disclaimer was filed in the Patent Office before the commencement of the action.* There is no United States statute which provides that defendants shall recover costs in any patent case. The common law of England allowed no costs to either party in any action at law ; 3 and the statutes of Gloucester, 4 which supplied that defect as to plaintiffs, did not supply it as to defendants. The statute of 23 Henry VIII., Chapter 15, enacted, however, that where, in actions on the case, the plaintiff is nonsuited after the appearance of the defendant ; or where the verdict happens to pass, by law- ful trial, against the plaintiff, the defendant shall have judg- ment to recover his costs against the plaintiff, and shall have such process and execution for the recovery of the same, as the plaintiff might have had against the defendant, in case the judgment had been given for the plaintiff. This statute of Henry VIII. having been enacted before the founding of the English colonies in America, and being suited to the condition of society in the United States, is in force in the United States courts to the same extent that it would be, if it were one of the rules of the common law. 6 544. All the items of costs which are taxable in the United States courts are specified in the United States statutes.' The province of a taxing officer is therefore limited to comparing suggested items with the particulars of those statutes, and to taxing those, and only those, which he finds enumerated there- in. 7 And no expenses, other than taxable costs, can be lawfully 1 Revised Statutes, Section 4919 ; 8 Hathaway v. Roach, 2 Woodbury Merchant v. Lewis, 1 Bond, 172,1857. & Minot, 69, 1846. * Revised Statutes, Sections 973, Revised Statutes, 823 ; The Bal- 4917, and 4922. timore, 8 Wallace, 392, 1869 ; Lyell 3 Day v. Woodworth, 13 Howard, v. Miller, 6 McLean, 422, 1855. 372, 1851. i Dedekam v. Vose, 3 Blatch. 153, 4 6 Edward I. Chapter!., A.D. 1278. 1853. CHAP. XVIII.] ACTIONS AT LAW. 379 inserted in any cost bill. 1 On most points, the statutes rele- vant to fees are so clear that they require no explanation ; but in some particulars, they needed and have received judicial construction. Those particulars may be conveniently explained in a few of the sections which immediately follow. 545. One attorney's docket fee, and no more, is taxable in each case against the defeated party. 2 There is no warrant for taxing the unsuccessful party with a separate docket fee for each of his adversary's attorneys, nor with a separate docket fee for each term during which a case has been pending in court, nor for taxing any docket fee in favor of any attorney of the defeated party. Neither is there any warrant for taxing an attorney's deposition fee in favor of any attorney of the beaten party, or in favor of more than one attorney of the party which prevails in the action. 3 546. The fees of the clerk of the court are in general taxable against the defeated party ; but several of the items to which he is entitled, are not so taxable, but are to be paid by the party for which he rendered the services to which they refer. Among these items, are copies of the record ordered by a party for his own use.* As the greater must include the less, this rule must apply also to copies of pleadings, deposi- tions or other papers which form parts of the records of cases. The extent to which clerks may make records, and charge defeated parties therefor, depends upon the rules of each particular court. In some districts, those rules appear to be made with a view to giving the clerks as much scope in this respect as can be supported by any argument ; while in other courts, the practice is to charge parties with no more recording than the reasonable requirement of each case seems to demand. 547. The fees of a commissioner or other magistrate, who takes a deposition in a case, are generally taxable against the defeated party/ but if the deposition is not offered in evi- 1 Parks u.Booth, 102 U.S. 106,1880. s Eevised Statutes, Section 824. * Dedekam v. Vose, 3 Blatch. 153, 4 Caldwell v. Jackson, 7 Cranch, 1853 ; Troy Iron & Nail Factory v. 277, 1812. Corning, 7 Blatch, 17, 1869 ; Parker 6 Fry v, Yeaton, 1 Cranch's Circuit v. Bigler, 1 Fisher, 285, 1857. Court Reports, 550, 1809. 380 ACTIONS AT LAW. [CHAP. XVIII. dence at the trial, those fees cannot be so taxed. 1 And reasoning by analogy from the taxation of attorneys' deposition fees, it should follow that magistrates' fees are not taxable on depositions which are offered in evidence, but are not admitted." 548. Witness fees are generally taxable against the defeated party, whether the testimony was given orally in court or by deposition before a magistrate. 3 But they are not so taxable when the testimony is taken by deposition and the deposition is not offered, 4 or if offered, is not admitted in evidence.' Nor will a defeated party be taxed with the fees of more than three witnesses to one fact, unless the prevailing party satisfies the court by affidavit, that the additional witnesses were really necessary to adequately support his contention on that point.' Whether any defeated party is taxable with the fees of any witness who testified on request, and without a subprena, is an unsettled question. It has been held in the affirmative by Judge WOODRUFF ' and Judge HALL ; 8 and in the negative by Justice McLsAN,* Judge SAWYER" and Judge LEAVITT." The ablest arguments on the two sides of the issue are those of Judge WOODRUFF and Judge SAWYER ; and there is probably nothing to be said on the subject, that is not said in one or the other of the five cases cited. If it is necessary, in order to make witness fees taxable, that the witness should be served with a subposna, it is not necessary that he should be so served by any officer. Service by a private person is sufficient. " Witness fees are taxable in favor of a defendant, though liis witnesses are not examined, because the action is not pros- 1 Hathaway v. Roach, 2 Woodbury 8 Cummings v. Plaster Co. 6 Blatch. & Minot, 75, 1846. 510, 1869. 8 Bevised Statutes, Sectioii 824. Dreskill v. Parish, 5 McLean, 3 Revised Statutes, Section 848. 213, 1851. 4 Hathaway v. Roach, 2 Woodbury 10 Spaulding v. Tucker, 4 Fisher, & Minot, 63, 1846. 637, 1871. 6 Section 547 of this book. " Woodruff v. Barney, 2 Fisher, Bussard v. Catalino, 2 Cranch's 244, 1862. Circuit Court Reports, 421, 1823. Power v. Semmes, 1 Cranch's 7 Dennis v. Eddy, 12 Blatch. 196, Circuit Court Reports, 247, 1805. 1874. CHAP. XTin.] ACTIONS AT LAW. 381 ecuted ; and where witnesses attend more than once at the same term, because of a stipulated postponement of the trial, their fees are to be taxed as for continuous attendance during the interim, and not as for repeated journeys from their homes. ' Witnesses from a distance are entitled to fees for Sunday, where they are detained over that day. 1 549. The taxation of costs may properly be made at the time the judgment is entered, and that is the course which best secures the rights of the parties. But a blank may be left in the judgment for that purpose, and may be filled by a taxa- tion made nunc pro tune, after the judgment has been affirmed by the Supreme Court. 3 Where the former practice is fol- lowed, the legality of the taxation may probably be reviewed by the Supreme Court, if the case is taken to that forum by the defendant, to secure a reversal of a judgment against him for substantial damages as well as costs, and if the court affirms or modifies the judgment as to the damages. 4 But where only nominal damages and costs are adjudged against a defend- ant, he cannot take the case to the Supreme Court for the pur- pose of securing a reversal of the judgment or a diminution of the costs. 6 Where a judgment for costs is entered against a plaintiff on the basis of a verdict for the defendant, the plain- tiff may go to the Supreme Court on a writ of error. If he secures a reversal of the judgment for errors on the trial, there will be no occasion for the court to consider the correctness of the taxation of costs. If, on the other hand, the court finds no error upon which to ground a reversal, it will seek for no error in the taxation.' The clerks of the Circuit Courts are the primary taxing officers of those tribunals ; but they perform that duty under the general or particular direction of the judges. The taxation 1 Hathaway v. Roach, 2 Woodbury 1880. & Minot, 63, 1846. 5 Elastic Fabric Co. v. Smith, 100 9 Schott v. Benson, 1 Blatch. 564, U. S. 110, 1879 ; Paper-Bag Cases, 1 "'<>. 105 U. S. 772, 1881. 3 Sizer v. Many, 16 Howard, 98, Canter v. Insurance Companies, 1853. 3 Peters, 318, 1830. 4 Parks v. Booth, 102 U. S. 106, 382 ACTIONS AT LAW. [CHAP. XVIII. of costs is ordinarily made by the clerk on his own motion, or at the request of the prevailing party, and without notice to the defeated party. If the latter is dissatisfied with the result, the court will hear his motion for a retaxation. If such a motion is accompanied with an explanation showing colorable ground for a claim of error in the taxation, the court will order the clerk to retax the costs, upon the mover giving the opposite party due notice of the time and place thereof, and paying the costs occasioned thereby. 1 Then, if either party is dissatisfied with the result of the retaxation, he may appeal to the court ; but as a foundation for the hearing of such an appeal, he must secure from the clerk an itemized bill of the charges to which he objects ; * and as a foundation for success on that hearing, must show that part or all of those items are unwarranted by the statute. All of these proceed-' ings must take place at the term in which the judgment is entered ; 8 except in cases where blanks for costs are left in judgments, pending writs of error from the Supreme Court. 550. A writ of error, properly taken out from the office of the clerk of the Supreme Court, 4 will carry any action at law, for an infringement of a patent, to the Supreme Oourt of the United States for review, regardless of the amount of damages in controversy ; * and whether the case was tried by a jury, by a referee, or by a judge alone.' But no writ of error can carry any question of fact to the Supreme Court. 7 The sole function of such a writ is to secure from that tribunal a review of the questions of law involved in a case, or, where the finding below was made by a judge, and was special, to secure a review of the question whether the facts so found are sufficient to support the judgment based thereon." 1 Collins v. Hathaway, Olcott's Philip v. Nock, 13 Wallace, 185, Reports, 182, 1845. 1871. s Dedekam v. Vose, 3 Blatch. 153, 8 York & Cumberland Railroad Co. 1853. v . Myers, 18 Howard, 246, 1855 ; 8 Blagrove v. Ringgold, 2 Cranch's Heckers v. Fowler, 2 Wallace, 123, Circuit Court Reports, 407, 1823. 1864. 4 West v. Barnes, 2 Dallas, 401, ' Heckers v. Fowler, 2 Wallace, 1791. 123, 1864. 4 Revised Statutes, Section 699 ; Revised Statutes, Section 700. CHAP. XVm.] ACTIONS AT LAW. 383 551. Bills of exception, allowed and signed, or sealed by the judge, constitute the only mode by which the questions of law that arise on the trial of a case, can be prepared for trans- mission to the Supreme Court in pursuance of a writ of error. 1 But a paper which is incorporated in the record, and which has all the substantial characteristics of a bill of exceptions, will be treated as such, even though it is not so entitled. 2 Such a document should state no more of the case than is necessary to present the questions which are reviewable in the Supreme Court, and which the plaintiff in error seeks to have reviewed there. 3 If those questions relate only to the pleadings, the pleadings only should be inserted in the bill of exceptions. Where those questions relate only to the competency of a wit- ness, the bill of exceptions need only show that the witness was offered, and was accepted or rejected, as the case may be, and that such admission or rejection was duly excepted to, and, in case of a rejection of a witness to want of novelty, that due notice of the fact, to be proven by him, was served on the opposite party ; 4 and in all cases of rejection, that the testimony which the witness would have given, was material to the issue. This last requisite was once held by the Supreme Court to be unnecessary ; 6 but that tribunal afterward decided, that to render an exception available in that court, it must affirmatively appear that the ruling excepted to, affected, or might have affected, the decision of the case.' Accordingly, in the case last cited, the court held that where particular answers of a competent witness were excluded by the court below, the bill of exceptions must contain those answers, and must show that they were material to the issues ; and the court said in the same case that where particular questions are excluded, and therefore not answered, the bill of exceptions must show what 1 Insurance Co. v. Lanier, 95 U. S. Co. v. Stimpson, 14 Peters, 448, 171, 1877. 1840 ; Blanchard v. Putnam, 8 Wal- 8 Herbert v. Butler, 97 U. S. 319, lace, 420, 1869. 1877. 5 Vance v. Campbell, 1 Black. 427, 3 Hausknecht v. Claypool, 1 Black. 1861. 431, 1861. Railroad Co. v. Smith, 21 Wai- 4 Philadelphia & Trenton Railroad lace, 255, 1874. 384 ACTIONS AT LAW. [CHAP. XVIII. facts the party offered to prove by means of those questions, and that such facts were material to the case. And in a still later case, the court held, that where a particular question was objected to, but was admitted and was answered, the bill of exceptions much show what the answer was, in order to enable the Supreme Court to pass upon the propriety of the evi- dence. ' 552. Where the questions which are sought to be brought before the Supreme Court, relate only to the instructions which the court below gave, or refused to give to the jury, the bill of exceptions should set forth the issues of the plead- ings, and the substance of the charge or refusal to charge, as the case may be, together with whatever part of the evidence is necessary to enable the Supreme Court to decide upon the propriety, or impropriety, of the action of the court below. The issues of the pleadings should be stated in the bill of excep- tions, for otherwise the appellate tribunal cannot know whether the charge or refusal to charge, which was excepted to, was material to the case ; and because the Supreme Court will not sit to try moot issues of law, nor to establish legal propositions in cases wherein those propositions are not involved." The substance of the charge, rather than the charge in extenso, should be stated in the bill, because the Supreme Court does not desire to be occupied in listening to minute criticisms and observations upon expressions incidentally introduced into a charge for purposes of argument or illustration, and which, if they were the direct point in judgment, might need qualifica- tion, but which do not show, that upon the whole the relevant law was not justly expounded to the jury.* But the whole substance of the charge should be stated where nothing but charged matter is excepted to ; because if part is omitted, the Supreme Court cannot know that the omitted portion did not cure the faults of the parts inserted. So also, where the mat- ter which is excepted to is a refusal to charge ; not only the 1 Lovell v. Davis, 101 U. 8. 542, 1881. 1879. 3 Evans v. Eaton, 7 Wharton, 356, * Jones v. Buokell, 104 U. S. 554, 1822. CHAP. XVin.] ACTIONS AT LAW. 385 refused instruction, but also the whole substance of the given charge, should be inserted in the bill of exceptions ; for other- wise the Supreme Court cannot be informed whether the refused instruction was not substantially contained in the charge which was actually given ; and because judges are never bound to in- struct juries in the form requested, provided they substantially embody the whole of the relevant law in the charges which they give. l Where nothing but charged matter is excepted to, the bill of exceptions should not contain any part of the evidence ; because the only question before the Supreme Court in such a case is the correctness of the charge." But where a refusal to charge is excepted to, the bill must contain the evidence to which the refused instruction relates, or must contain a state- ment of facts pertinent to that point, and a statement that evidence was introduced tending to prove those facts ; because no court is bound to give any charge which does not relate to the evidence, no matter how sound the proposed instruction may be, as a proposition of law. 553. Specific exceptions must be made to instructions, in order to entitle the objector to a review of those instructions in the Supreme Court. Where a requested instruction is refused, and the refusal is excepted to, that refusal will be sustained by the Supreme Court, if the requested instruction was unsound in any particular. 3 Counsel ought therefore to carefully separate their propositions of law from each other, when framing their requests for instructions, lest one erroneous proposition deprive them of the benefit of several sound ones. 554. Exceptions to charges, or to refusals to charge, must be made and noted while the jury is at the bar. 4 But bills of exception may be drawn up, and signed or sealed by the judge at any time before the expiration of the term, unless the judge enforces some rule of his court, which prescribes a shorter time 1 Indianapolis Section 422 of this book. Equity Kule 20. 404 ACTIONS IN EQUITY. [CHAP. XX. tion at law, agrees with the latter in substance, except in the following particulars. It may state infringements which were committed before the complainant obtained his title, provided that title, when obtained, covered the right of action for those infringements. It need not aver that any damage was incur- red by the complainant, if the action is brought for an injunc- tion only, or for an injunction and an account of the defend- ant's profits. Where the bill prays for a preliminary injunc- tion, its stating part must set forth one or more of the grounds for that relief, which are explained in the chapter on injunc- tions ; ' and when profits are sought to be recovered, it must plainly aver that profits were realized by the defendant on account of the stated infringement. This last allegation has heretofore been sometimes omitted from bills in patent cases, but the omission would always have been a fatal one, if the de- fendants had availed themselves of it. The necessity for such an allegation follows from the rule of patent law that where a par- ticular infringer made no profits from his infringement, no profits can be recovered from him ; * and from the rule of equity pleading, that every fact which is necessary to entitle a complainant to the relief for which he prays, must be distinctly and expressly averred in the stating part of his bill. 8 580. The prayer for relief should be both special and general. 4 The special part should ask for a preliminary in- junction, and for a permanent injunction, and for an account of the defendant's profits, and for an assessment of the com- plainant's damages, and for an increase of those damages, and for costs ; or for as many of those kinds of relief as the com- plainant hopes to obtain in the action. The prayer for general relief should be in the ordinary form of prayers of that kind. 581. The form of the interrogating part is prescribed by the Supreme Court. 4 That part is designed to secure from the defendant such admissions or statements as will obviate 1 Parker v. Brant, 1 Fisher, 58, * Wright v. Dame, 22 Pickering 1850. (Mass.), 59, 1839. * Elizabeth v. Pavement Co. 97 4 Equity Rule 21. U. S. 126, 1877. Equity Rule 43. CHAP. XX.] ACTIONS EN EQUITY. 405 the necessity for evidence to support those allegations of the bill which relate to his doings. The interrogatories must be divided from each other, and consecutively numbered, and a note most be put at the foot of the bill specifying which of those numbered interrogatories each defendant is required to answer. 1 Where the complainant in his bill waives the oath which otherwise the defendant is entitled to make to his an- swer, or if he requires such an oath to be made only to the an- swer of certain specified interrogatories ; the answer of the de- fendant, though it is in fact under oath, is not evidence in his favor on any point not covered by such specified interrogato- ries ; unless the case is heard on bill and answer only." 582. The prayer for process must contain the names of all the defendants who are mentioned in the introductory part of the bill, and if any of them are known to be minors, or otherwise under guardianship, that fact must be stated in the prayer for process. 3 583. The bill must be signed by counsel, and by a solicit- or of the court in which it is filed. 4 But if the attorney of the complainant is not only counsel in Federal courts general- ly, but also is solicitor in the particular court in which the bill is filed, his signature will suffice in both capacities. 584. An oath of the truth of the bill must be appended to such a document, if it prays for an injunction. 5 Such an oath is to be made by the complainant, unless he is in such a situation as to be unable to make it, in which case it may be made by his agent conversant with the facts." Where the complainant is a corporation, the bill may be verified by any officer of the corporation who knows it to be true ; or if no such officer possesses that knowledge, it may be sworn to by any agent or attorney who does. 7 Where there is a plurality of complainants, the bill may be sufficiently verified by the oath 1 Equity Rules 41 and 42. 614, 1825. 1 Equity Rule 41. Wood worth v. Edwards, 3 Wood- 3 Equity Rule 23. bury & Minot, 124, 1847. 4 Equity Rule 24. ' Bank of Orleans v. Skinner, 9 8 Rogers v. Abbot, 4 Washington, Paige, (N. Y.) 305, 1841. 406 ACTIONS IN EQUITY. [CHAP. XX. of one of them. ' If the bill prays for a preliminary injunction, and if its affiant can swear only on information and belief, to the defendant's doings, and to their character as infringe- ments, the application should be fortified by affidavits of per- sons who know what the defendant has done, and by affidavits of experts who can intelligently testify to the character of those doings, as compared with what appears to be covered by the complainant's patent. Where the complainant can positively swear to part of the allegations of his bill, and can swear to the residue only on information and belief, the; bill should state the first class of facts positively, and the second class on in- formation and belief alone ; and the oath should clearly dis- criminate between the two classes in that behalf. It is not sufficient for the oath to state that the material averments of the bill are true," nor to state that those allegations are true which render an injunction necessary and proper, 3 because such a form of oath leaves it uncertain which allegations the affiant had in mind. But positive oaths ought to be based on positive knowledge. It is much to be feared that many per- sons make affidavits to bills and other papers without sufficient reflection upon the statements they contain, or upon the na- ture of an oath, or upon the pains and penalties of perjury. The fault is largely due to the attorneys who write the papers. The better lawyers will guard the conscience of the client at this point, while the inferior ones are sometimes more apt to mislead than to protect it. Affidavits to bills, and indeed all other affidavits to be used in any civil cause, in any circuit or district court of the United States, may be taken before a commissioner of the circuit court for the district, 4 or before any notary public of either of the States or Territories or of the District of Columbia.* 585. A bill to perpetuate testimony tending to show a 1 Goodyear v. Allyn, 6 Blatch. 33, 1832. 1868. 4 Revised Statutes, Section 945. * Sauvinet v. Poupono, 14 Lonisi- 6 19 Statutes at Large, Ch. 304, p. ana, 87, 1839. 206. * Hebert v. Joly, 5 Louisiana, 50. CHAP. XX.] ACTIONS IN EQUITY. 407 particular patent to be void, may be filed and prosecuted in any United States Circuit Court. 1 There was once a curious bill filed by a hypothetical inf ringer against a patentee, stating that the complainant did not infringe the defendant's patent, and praying the court to enter a decree to that effect. 1 The counsel who argued in behalf of the bill were men of great ex- perience in the law, but their views were overruled by Justice HUNT, who heard the case on the circuit. He held that no such action, as that attempted, was provided for by any stat- ute, or authorized by any principle of equity jurisprudence. 586. Amendments to bills may be made as a matter of course, arid without costs, at any time before a copy has been taken out of the clerk's office ; and may be made as of course with costs, after a copy has been taken out, and before any plea, answer, or demurrer has been filed. 3 After an answer or plea, or demurrer is put in, and before replication, the complainant may, upon motion, without notice, obtain an order from any judge of the court to amend his bill on or before the next succeeding rule day, upon payment of costs, or with- out payment of costs, as the judge may in his discretion direct. 4 After a replication is filed, and before the hearing of the case, the bill cannot be amended except upon a special order of the judge of the court, upon motion or petition, after due notice to the other party, and upon proof by affidavit that the application is not made for the purpose of vexation or delay, and that the matter of the proposed amendment is material, and could not with reasonable diligence have sooner been introduced into the bill, and upon the plaintiff submit- ting to such other terms as may be imposed by the judge for speeding the cause. & Amendments applied for at or after the hearing of a case are not regulated by the Equity Rules, but are allowed or refused, according to the sound discretion of the 1 Revised Statutes, Section 866 ; s Celluloid Mfg. Co. v. Vulcanite New York ^Baltimore Coffee Polish- Co. 13 Blatch. 375, 1876. ing Co. v. New York Coffee Polish- 3 Equity Rule 28. ing Co. 9 Fed. Rep. 578, 1881, 11 * Equity Rule 29. Fed. Rep. 813, 1882. * Equity Rule 29. 408 ACTIONS IN EQUITY. [cHAl. XX. court. 1 But that discretion is governed by precedents, and those precedents indicate that amendments, at or after the hearing, will be allowed only where the bill is found to be de- fective in proper parties, or in its prayer for relief, or in the omission or misstatement of some fact or circumstance con- nected with the substance of the case, but not forming the substance itself, or where it is necessary for the complainant to take issue with new matter in the answer. 1 "Where a litiga- tion has been conducted precisely as it would have been if the proper amendment had been made before any plea, answer, or demurrer was filed, the court will allow that amendment to be filed even after the hearing, and thus make the pleadings conform to what the course of the litigation assumed them to be. 8 587. A bill needs amendment when the defendant's de- murrer, plea, or answer points out a material fault therein, or when the complainant otherwise discovers a material error or omission which may be cured, or when the defendant's plea or answer contains statements to which it is necessary to plead by way of confession and avoidance. 4 No reply by way of con- fession and avoidance can be made in a replication in equity.* "Where the plea or answer sets up new matter, to which the complainant wishes to reply by way of traverse, the general replication is the proper pleading to file for that purpose.' 588. Defences may be made to a bill in equity for in- fringement of a patent, by a demurrer, or by a plea, or by an answer ; or by a demurrer to part, and a plea to another part, and an answer to the residue ; ' or by a demurrer to part, and a plea to the residue ; or by a demurrer to a part, and an an- swer to the residue ; or by a plea to a part, and an answer to the residue.' 1 Neale v. Neales, 9 Wallace, 9, 4 Wilson v. Stolley, 4 McLean, 275, 1869. 1847. * Shields v. Barrow, 17 Howard, 8 Eqnity Rule 45. 144, 1854. Eqnity Rule 66. * The Tremolo Patent, 23 Wallace, ' Eqnity Rule 32. 627, 1874 ; Vattier v. Hinde, 7 Peters, 8 Story's Eqnity Pleading, Section 273, 1833 ; Dnponti v. Mussy, 4 437. Washington, 128, 1821. CHAP. XX.] ACTIONS IN EQUITY. 409 The nature and operation of demurrers and answers in equity practice are so well understood by the profession, that nothing need be said about them in this book, further than to show the applicability of each of those forms of pleading to the various defences which belong to patent litigation. But defences by plea may bear a longer review, because they have largely gone out of use in the Federal courts and their prin- ciples been partly forgotten by the members of the bar, since the Equity Rules authorized nearly every defence to be made in an answer that formerly required a plea for its inter- position. 1 But those rules do not authorize any defendant to make a particular defence in a plea, and if unsuccessful, then to make it over again in an answer." Such a plan, if al- lowed, would enable a defendant whose plea is overruled as stating no defence at law, to argue that question again on the final hearing ; and it would enable a defendant, whose plea is proven to be false in fact, to contest that issue again on new testimony taken in pursuance of an answer. Though pleas in bar are not necessary in equity cases in the Federal courts, except under rare circumstances, they may sometimes be made useful in saving time, labor, costs, and expense. It is, on these accounts, expedient to remind the reader of the general nature and operation of those pleadings, before ex- plaining their special application to actions in equity for in- fringements of patents. 589. A plea in equity is a sworn 3 pleading, which alleges that some one fact, not stated in the bill, is true ; or that some one statement of fact in the bill, is not true ; or that some one fact, which the bills states is not a fact, is a fact nevertheless. A plea of the first kind sets up new matter by way of confes- sion and avoidance, and is properly named an affirmative plea. 4 This is the only sort of plea in equity which was recognized in the time of Lord BACON.* A plea of the second kind 1 Equity Rule 39. Daniell's Chancery Practice, Vol. Hubbell v. De Land, 14 Fed. Eep. 1, Ch. XV. Section 1. 475, 1882. & Beame's General Orders of the 1 Equity Rule 31. High Court of Chancery, 26. 410 ACTIONS IN EQUITY. [CHAP. XX. traverses some one statement of fact in the bill, and is there- fore properly called a negative plea. * This sort of plea was established by Lord THUKLOW, and thereafter became a fully recognized part of equity pleading in England and in the United States.* A plea of the third kind states some fact to be true which the bill seeks to impeach. 3 It is similar to an affirmative plea in respect that it sets up matter outside of that upon which the bill is based ; and it is similar to a negative plea, in that it contradicts some one statement of fact in the bill. It may therefore he properly named a composite plea. 590. After a defendant files a plea to a bill in equity, the complainant should satisfy himself whether it states a good de- fence 10 the bill, or to that part of the bill to which it refers, and should ascertain whether it is true in point of fact. If he is sure that he can prove it to be false, he should take issue upon it * by filing a replication. 6 If he has any ground for fear that the plea is true in fact, and any ground for hope that it is bad in law, his true course is to set the plea down for argument ; * which setting down is equivalent to a demur- rer to the plea. T If, on the argument, the plea is held to state no fact which constitutes a defence to the bill, or to any part thereof, it will be overruled, and the defendant will be per- mitted to file an answer setting up whatever other defences he can. 8 But if the plea is held on the argument to state a good defence to the bill, or to that part of the bill to which it ap- plies, it will be allowed, and thereupon the complainant may file a replication. 9 After a replication is filed to a plea, the fate of the entire bill, or of that part thereof to which the plea applies, will depend upon the trial of the issue of fact thus raised by the parties. If the plea is proven to be true, 1 Daniell's Chancery Practice, Vol. 1, Ch. XV., Section V. 1, Ch. XV., Section 1. Equity Kule 33. 1 Story's Equity Pleading, Section ' Davison's Ex'rs v. Johnson, 16 668. New Jersey Equity, 113, 1863. a Daniell's Chancery Practice, Vol. 8 Equity Kule 34. 1, Ch. XV., Section 1. Story's Equity Pleading, Section 4 Equity Kule 33. 697 ; Daniell's Chancery Practice, Daniell's Chancery Practice, Vol. Vol. 1, Ch. XV., Section V. CHAP. XX.] ACTIONS IN EQUITY. 411 the bill will be dismissed, if the plea applies to the whole bill ; ' or if it applies to a part only, the bill will be defeated as to that part. 3 But if the plea is proven to be false, the complainant may have a decree without any further proceedings. 3 Only one defence can be made to a bill in a plea, unless the court, in order to avoid a special in- convenience, gives a special permission to a defendant to make a plurality of defences in that method of pleading. 4 The rules of English equity pleading allowed a defendant whose first plea was overruled to set up in a new plea any other de- fence to which a plea was suitable. 6 But in the United States courts no successive pleas are permitted to be filed, for after any plea has been overruled, the defendant, if he has other defences to interpose, must interpose them in an an- swer." This outline of the principles of pleas in equity, should be kept in rnind by the reader while perusing sundry of the sections which follow. 591. The twenty-seven defences which may be made to actions at law for infringements of patents, 7 may all be made to actions in equity based on such causes ; and the latter ac- tions are also liable to two other defences, to which actions at law are not subject. These are non-jurisdiction of equity, and laches. It is convenient first to explain the facts which may support each of these two defences, and to state the various methods in which each may be interposed, and afterward to review the twenty -seven defences in their order, and to explain wherein any of them differ in their operation in equity, from their operation at law, and to state what forms of pleading are 1 Hughes v. Blake, 6 Wheaton, berath v. Trimming Co. 5 Bann. 5, 1828 ; Paynes v. Coles, 1 Mun- 3 Equity Eule 69. ford (Va.) 394, 1810. 4:38 ACTIONS IN EQUITY. [CHAP. XX. unless such a practice, in a particular case, would operate as a surprise upon the opposite party. 1 642. A jury of not less than five and not more than twelve persons may be empanelled by any United States Circuit Court, when sitting in equity for the trial of a patent cause, for the purpose of submitting to them such questions of fact in the case as the court shall deem it expedient to submit ; and the verdict of such a jury is treated in the same mariner and with the same effect as in the case of issues sent from chan- cery to a court of law and returned with such findings.* Therefore such a verdict is only advisory, and never conclu- sive upon the court. If the judge disagrees in opinion with the jury relevant to the questions of fact covered by the ver- dict, he may enter a decree contrary thereto. 3 But the regu- lar course of proceeding in such a case is to enter a decree in accordance with the verdict, unless the party against whom it was found moves the court for a new trial. A new trial in such a case is granted or refused according as the judge thinks the verdict was right or was wrong ; and without special regard to any errors, or freedom from errors, which character- ized the admission or rejection of evidence on the trial, or the instructions which were given or those which were refused by the judge. Where a new trial is refused, and a decree is en- tered in accordance with the verdict, if the defeated party would take the case to the Supreme Court for review, he must do so on an appeal from the decree, and not upon a writ of error as from a judgment entered upon a verdict in an action at law. In. a properly prepared case, the Supreme Court will decide whether, on the whole, the decree was right or was wrong, but it will not pass upon the correctness or incorrect- ness of the rulings of the judge at the jury trial. Therefore the evidence taken at the jury trial should be preserved, if there is any intention to take the case to the Supreme Court, but no bill of exceptions in the case is necessary or is proper. 4 1 Knapp v. Shaw, 15 Fed. Eep. * Silsby u. Foote, 1 Blatch, 545, 115, 1883. and 20 Howard, 290, 1857. * 18 Statutes at Large, Part 3, Ch. 4 Watt v. Starke, 101 U. S. 247, 77, Section 2, p. 316. 1879. CHAP. XX.] ACTIONS IN EQUITY. 439 643. A master in chancery may be deputed by a circuit court to try any question of fact in a patent case, and to report his conclusion thereon. 1 But such a report is advisory only, and no decree will be entered upon it, if either party can con- vince the judge that it was wrong. Exceptions to the master's report are the proper means of appeal from his conclusion. If, on such exceptions, the judge concludes that the master was wrong in any respect, he may send the case back to him, with directions to make a new report, and with prescriptions of new criteria by which to make it ; * or he may proceed to try the questions of fact himself, if that course appears to be more convenient. The rules of practice which regulate the taking of evidence by masters in chancery, and regulate the hearings before them, and the filing of exceptions to their reports, are the same, when they are directed to ascertain the truth relevant to such questions of fact as novelty or infringement, that they are in the more common cases wherein they are directed to take and state an account of profits and damages. 644. An interlocutory decree, in an equity patent case, is a decree which adjudges that the patent sued upon is valid ; and that the defendant has infringed it ; and that a master in chancery be directed to take and report an account of the profits which the defendant realized from that infringement, and of the damages which the complainant sustained by reason thereof ; and sometimes that the defendant be permanently en- joined from further infringement. No appeal from such a decree lies to the Supreme Court.* Until after a final decree has been made for a specific money recovery, in pursuance of an account of profits and damages, the case is within the con- trol of the court. 4 Attempts to secure the reconsideration of interlocutory decrees are not uncommon in patent litigation. Therefore the attention may properly be given, at this point, to the methods in which such attempts may regularly be 1 Parker v. Hatfield, 4 McLean, 61, 650, 1849 ; Humiston v. Stainthorp, 1845. 2 Wallace, 106, 1864. * Cawood Patent, 94 U. S. 708, 4 Beeves v. Keystone Bridge Co. 2 1876. Bann. & Ard. 256, 1876. 1 Barnard v. Gibson, 7 Howard, 440 -ACTIONS IN EQUITY. [CHAP. XX. made ; and to the grounds upon which they must be based in order to succeed. 645. A petition for a rehearing may be filed at any time before the end of the term at which the final decree in the case is entered and recorded ; ' but not after that termina- tion ; a unless the case is one which cannot be appealed to the Supreme Court ; in which event it may be admitted, in the discretion of the court, at any time before the end of the next succeeding term. 3 Such a petition may be based upon an apparent error of the judge in deciding upon the case as it was presented to him in the record ; or it may be based on facts which were discovered after the entry of the decree which the petition asks to have reconsidered. These two kinds of rehear- ing are quite diiferent from each other, not only in respect of the grounds upon which they are based, but also in respect of the methods by which they are obtained. 646. A rehearing for matter apparent on the face of the record, may be applied for by a petition signed by counsel, and stating the ground upon which the rehearing is prayed.' That ground must be sufficient to convince the judge that the decree was perhaps erroneous. 6 In order to do that, it is necessary to point out some particular misapprehension of the law, or some particular mistake in respect of the evidence, into which the judge was unfortunate enough to fall. It is useless to ask for a rehearing of this kind, on the general ground that the decision is thought by counsel to be wrong. Such a re- quest was once presented to Justice WOODBURY, but it met the following apt reply : " It is hardly in the power of the human mind, surely not of the sound judicial mind, after forming deliberate opinions after long argument and much examination, to change at once its conclusions, merely on a repetition of the same arguments and the same facts. Opin- ions thus liable to change, would be as worthless after al- 1 Equity Rule 88. Equity Rule 88. 1 Barker v. Stowe, 4 Barm. & Ard. 5 American Diamond Book Boring 485, 1879. Co. v. Sheldon, 18 Blatch. 50, 1880. Equity Rule 88. CHAP. XX.] ACTIONS IN EQUITY. 441 tered, as they were before. And hence it is wisely provided in most judicial systems, as in ours, that where nothing new exists to justify a change in judgment, a general review on the old grounds should be made by different persons, by a higher and appellate tribunal." 647. A rehearing on account of newly discovered evidence, must be applied for as soon as possible after its discovery,* by a petition, verified by the oath of the applicant or of some other person, 8 and stating the nature of the alleged newly discovered evidence, and that it was not known to the peti- tioner till after the decree was rendered, and also what dili- gence was exercised in searching therefor prior to that time, 4 and praying for leave to file a supplemental bill in the nature of a bill of review, and for a rehearing of the cause at the time when the issues raised by that bill shall be ready for hear- ing. 5 The function of such a bill is to furnish a foundation in the pleadings for evidence on both sides of the new issues of fact to determine which the rehearing is granted. When such a petition is filed, it must be supported by affidavits of the witnesses who are expected to testify to the newly discov- ered facts which are sought to be brought into the case,' and also by affidavits showing that those facts were not discovered by the petitioner till after the former hearing, 7 and could not, with reasonable diligence, have been discovered sooner than they were. 8 Such a petition may be answered by counter affidavits tending to show that part or all of the state- ments in the petitioner's affidavits are untrue.' To grant the prayer of the petition, the court must be satisfied that the ap- 1 Tufts v. Tufts, 3 Woodbury & Buerk v. Imhaeuser, 2 Bann. & Minot, 429, 1847. Ard. 452, 1876. 8 Blaudy u. Griffith, 6 Fisher, 435, ' Beeves v. Keystone Bridge Co. 2 1873. Bann. & Ard. 256, 1876. 8 Equity Rule 88. 8 India Rubber Comb Co. v. Phelps, 4 Allis v. Stowell, 5 Bann. & Ard. 4 Fisher, 317, 1870 ; Hitchcock v. 459, 1880. Tremaine, 9 Blatch. 551, 1872 ; Barker * Dexter v. Arnold, 5 Mason, 310, v. Stowe, 4 Bann. & Ard. 405, 1878. 1829 ; Daniell's Chancery Practice, I Unruly u. Griffith, 6 Fisher, 435, 1537. 1873. 442 ACTIONS IN EQUITY. [CHAP. XX. plicant's affidavits are probably true, 1 and clearly material,* and that the facts they set forth were not known to the peti- tioner at the time of the former hearing, and could not, with reasonable diligence, have been discovered prior to that event.' Eehearings will not be granted to enable parties to search for further evidence ; 4 nor to strengthen their expert testi- mony ; * nor to amend their pleadings so as to make certain evidence admissible, which was taken before the former hear- ing, and was disregarded thereon, because not supported by any pleading ; 6 nor to produce cumulative evidence on ques- tions of fact which were in issue at the former hearing ; 7 nor to correct errors of management committed by the petitioner's counsel. 8 648. A supplemental bill in the nature of a bill of review, should state the newly discovered facts upon which it is based, and should pray that the cause may be heard with respect to the new matter, at the same time that it is reheard upon the original bill, and that the party who files the subordinate bill may have such relief as the nature of his case requires. The proceedings upon a bill of this description are the same as those upon original bills in general.' No order for a rehear- ing, made after an interlocutory decree, and while an account of profits and damages is being taken by a master in chancery, will stop the taking of that account, unless the court enters a special order directing the master to suspend proceedings therein. 10 1 Munson v. New York, 11 Fed. 5 Hitchcock v. Tremaine, 5 Fisher, Rep. 72, 1882. 538, 1872. 1 Buerk u. Imhaeuser, 2 Bann. & 8 American Saddle Co. v. Hogg, 6 Ard. 452, 1876. Fisher, 67, 1872. 1 Prevost v. Gratz, 1 Peters, Circuit 7 Blandy v. Griffith, 6 Fisher, 435, Court Reports, 364. 1816 ; Baker v. 1873. Whiting, 1 Story, 234, 1840 ; Reeves 8 Ruggles v. Eddy, 11 Blatch. 524, v. Keystone Bridge Co. 2 Bann. & 1874. Ard. 258, 1876 ; Page v. Telegraph Darnell's Chancery Practice, Co. 18 Blatch. 122, 1880. 1537. 4 Munson v. New York, 11 Fed. I0 Daniell's Chancery Practice, Rep. 72, 1882. 1467. CHAP. XX.] ACTIONS IN EQUITY. 443 649. A final decree will be entered in favor of the defend- ant, where a demurrer to the whole bill is sustained on a point which is not cured by amendment ; or where a plea to the whole bill is sustained on an argument, and is thereupon re- plied to, and is found to be true on the trial ; or where either of the numerous defences which may be made in an answer, and which apply to the whole bill, are established at an inter- locutory hearing. And final decrees will be entered in favor of complainants, when their bills have successfully run the gauntlet of demurrers, pleas, answers, interlocutory hearings, petitions for rehearings, supplemental bills in the nature of bills of review, accounting before a master, exceptions to the master's report, and final hearings, througli which original bills in patent cases may regularly be caused to pass. The last three parts of this series of proceedings, are explained in the chapter on profits, and the others have already been out- lined in this. Assuming therefore, that a final decree has already been entered for the complainant or the defendant, it is now convenient to delineate the further proceedings to which the defeated party may resort. These are of two kinds : bills of review, and appeals. 650. A bill of review is the proper means of securing a reconsideration of a final decree after the expiration of the term at which it was entered. ' Such bills are of two sorts : those filed to correct errors apparent on the face of the pleadings or decree ; " and those filed to introduce evidence of facts which occurred or were discovered after the decree was entered.' In order to secure favorable action on such a bill, the petitioner must first pay to the opposite party the amount of the decree which he seeks to have reversed or modified, unless the court releases him from that necessity. But the court will release him if he is unable to pay ; * and will probably do so where 1 Story's Equity Pleading, Section 3 Story's Equity Pleading, Section 403. 404. * Whiting v. The Bank of the 4 Story's Equity Pleading, Section United States, 13 Peters, 14, 1839. 400. 444 .ACTIONS m EQUITY. [CHAP. xx. the opposite party is insolvent, if the petitioner will give good security for the money decreed, or will deposit that money in court. 1 651. A bill of review, to correct errors apparent on the pleadings or decree, may be filed without leave of court, 2 but no such bill will be considered or acted upon by the court, un- less it is filed within the same time after the entry of the de- cree, as that provided for by statute relevant to appeals ; ' which latter space is at present two years. 4 Is or will such a bill be entertained, if the decree which it was filed to correct, was entered by the Circuit Court, after an appeal from the Supreme Court, and in pursuance of directions contained in the mandate of the latter tribunal. 6 In considering a bill of review of this sort, the court will confine its examination to the pleadings and decree in the original action, for no bill lies to correct any errors of fact which were made in examining or weighing the evidence upon which the decree was based." 652. A bill of review, filed to introduce evidence of new facts or of newly discovered facts, cannot be filed without leave of court. 7 Where the case sought to be reviewed has not been appealed, the application for leave is made to the court which rendered the decree, but where the case has been appealed to the Supreme Court the application must be pre- sented to that tribunal. 8 If that court decides that the leave ought to be granted, it will return the case to the court below, with directions to receive and adjudicate the bill of review ; ' and thereafter the case will proceed in the lower tribunal much as it would have done if no appeal had been taken. After the bill of review has been litigated and a new decree entered, 1 Griggs v. Gear, 3 Oilman, (Illi- 570, 1853. nois) 17, 1845. Whiting v. Bank of the United s Ross v. Prentiss, 4 McLean, 106, States, 13 Peters, 14, 1839 ; Story's 1846 ; Story's Equity Pleading, Sec- Equity Pleading, Section 407. tion 405. 7 Boss v. Prentiss, 4 McLean, 106, Thomas v. Harvie's Heirs, 10 1846. Wheaton, 149, 1825. * Roemer v. Simon, 2 Bann & Ard. 4 Revised Statutes, Section 1008. 72, 1875. 6 Southard v. Russell, 16 Howard, * Revised Statutes, Section 701. CHAP. XX.] ACTIONS IN EQUITY: 44:5 an appeal will lie to the Supreme Court on the whole case. The mode of application for leave to file such a bill, is by a petition stating the original proceedings and the new facts or newly discovered facts on the strength of which reversal of the decree is prayed. 1 The petition must be supported by affidavits stating the exact nature of those facts, in order that the court may judge of their materiality and sufficiency, and showing that they occurred after the final decree was entered, or if they occurred before that time, that they were not dis- covered, and could not with reasonable diligence have been discovered till afterward. 8 Bills of review of this sort may be filed even more than two years after the entry of the de- cree, provided they are filed within a reasonable time after the discovery is made upon which they are based. 8 Leave to file such a bill will be granted, in a proper case, whether those facts relate to issues in the original action, or relate to de- fences which were not in issue therein ; 4 but it will not be granted where the facts stated in the petition are not adapted, or are not sufficient, to have altered the decree if they had been before the court on the hearing," nor where those facts could, with reasonable diligence, have been discovered before the decree was entered," nor to enable the petitioner to intro- duce evidence to impeach the character of the witnesses upon whose testimony the decree was based ; nor to introduce cumulative testimony on a point litigated and decided at the hearing ; but newly discovered corroborating evidence in writ- ing may furnish a foundation for such leave. 7 After a bill of review to introduce new facts, or newly discovered facts, has been duly filed, the opposite party may plead or answer there- 1 Massie's Heirs v. Graham's Hemstead's Circuit Court Reports, Adm'rs, 3 McLean, 43, 1842. 131, 1833 ; Story's Equity Pleading, * Story's Equity Pleading, Sections Sections 415 and 416. 412, 413, and 414. 5 Dexter v. Arnold, 5 Mason, 313, * United States v. Samperyac, 1829. Hemstead's Circuit Court Reports, * Rubber Co. v. Goodyear, 9 Wal- 131, 1831. lace, 806, 1869. 4 Dexter v. Arnold, 5 Mason, 313, 7 Southard v. Russell, 16 Howard, 1829 ; United States v. Samperyac, 569, 1853. 446 ACTIONS IN EQUITY. [CHAP. XX. to, and thus put the party who filed it, to the proof of its alle- gations. 1 A demurrer to a bill of this sort is not appropriate, because its sufficiency in point of law must be passed upon before it can be filed. 653. A bill, in the nature of a bill of review, differs from a bill of review only in respect of the legal character of the com- plainant. The latter bill can be filed by either of the parties to the decree which is sought to be reviewed, or by their re- spective privies in representation, such as heirs, executors, or administrators ; but the former is required to be filed, where privies in estate, such as devisees or assignees of an original party, seek to secure the reversal or modification of a final de- cree after the expiration of the term at which it was entered.* Neither of these sorts of bills is to be confounded with a sup- plemental bill in the nature of a bill of review. That is still another variety, and its character and operation have already been outlined. 3 654. An appeal to the Supreme Court is demandable from every final decree, in cases touching patent rights, regardless of the amount involved therein, 4 provided it is taken within two years after the entry of the decree. 6 But in order to operate as a supersedeas, and thus stay execution, an appeal must be taken within sixty days after the rendition of the decree ; and indeed an execution may be issued, if an appeal is not taken within ten days after such rendition." But in the latter case, a supersedeas afterward obtained will prevent further pro- ceedings under the execution, though it will not intefere with what has already been done. 7 The time within which appeals may be taken, may properly be held to begin either when the case is finally decided, or when the formal decree is signed by the judge, and filed with the clerk of the court. 8 When an 1 Dexter v. Arnold, 5 Mason, 309, 1871. 1829. 6 Revised Statutes, Section 1008. J Story's Equity Pleading, Section Revised Statutes, Sections 1012, 409. and 1007. s Sections 647 and 648 of this ' Board of Commissioners v. Gor- book. man, 19 Wallace 663, 1873. 4 Revised Statutes, Section 699 ; 8 Silsby v. Foote, 20 Howard 290, Philip v. Nock, 13 Wallace, 185, 1857. CHAP. XX.] ACTIONS IN EQUITY. 447 appeal operates as a supersedeas, it so operates only as against the money recovery provided for in the decree, and not as against that part of the decree which directs the payment of the master's fees, 1 nor as against that part which directs an in- junction to issue ; * but the judge who enters a decree grant- ing an injunction, has discretionary power to suspend or modify the same pending an appeal. 3 655. On the hearing of an appeal in the Supreme Court, the decree may generally be attacked by the appellant, upon any ground upon which it was resisted in the court below. There are a few exceptions to this rule. The decree cannot be assailed on the ground that the court below refused to set aside a decree pro confesso, 4 or refused to allow the appellant to retract an admission which he had made in his pleadings ; * or rendered any other decision which belonged to the judicial discretion of the court to make. Nor can a decree be attacked in the Supreme Court, on account of any error made by a master in chancery in taking an account of profits or damages, unless that error was brought before the court below for cor- rection, by means of a proper exception to the master's report.* "Where a decree is reversed and remanded for further proceed- ings, and a second decree is entered by the court below after those proceedings are taken, and an appeal is taken from the second decree, that decree cannot be assailed on account of any errors that occurred prior to the former decree. 7 No de- cree can be attacked by the appellee, on the appellant's ap- peal. Where either party to a decree intends to ask the Supreme Court to direct it to be altered, he must appeal to that tribunal, whether the other party appeals or not. 8 "Where 1 Myers v. Dunbar, 1 Bann. & Ard. ard, 289, 1855. 565, 1874. ' Himely v. Hose, 5 Cranch, 313, 8 Whitney v. Mowry, 3 Fisher, 1809 ; The Santa Maria, 10 Wheaton, 175, 1867. 431, 1825 ; American Insurance Co. Equity Kule 93. v. Canter, 1 Peters 511, 1828 ; Corn- 4 Dean v. Mason, 20 Howard, 198, ing v. Troy Iron & Nail Factory, 15 1857. Howard, 451, 1853. 5 Jones v. Morehead, 1 Wallace, 8 Corning v. Troy Iron & Nail 155, 18G3. Factory, 15 Howard, 451, 1853. 6 Kinsman v. Parkhurst, 18 How- 4AS ACTIONS IN EQUITY. [CHAP. XX. both parties appeal, both appeals are heard together in the Supreme Court, and the complainant in the court below is en- titled to open and to close the argument. 1 A decree may also be attacked by an appellant, on several grounds upon which it may not have been resisted in the court below. Non-jurisdic- tion of equity falls in this category ; * and so does want of in- vention, when that want results from facts of which the court will take judicial notice. 3 Where a defendant interposed several defences in the court below, and where that court held them all to be bad, except one which it held to be good, and therefore dismissed the bill ; and where the Supreme Court on an appeal, finds the latter defence to be bad, it will there- upon decide whether either of the others are good, and if it finds either of them to be so, it will affirm the decree. 4 656. After the Supreme Court has heard an appeal, it may affirm the decree, or may reverse it, or may modify it, or may remand the case to the court below for further pro- ceedings. 6 Where it affirms the decree, it ends the litigation, leaving the court below to enforce its adjudication, if any en- forcement is required. Where it reverses the decree, it generally does so at the appellee's costs, so that the court below, when it receives the mandate, will have nothing to do but to tax those costs, and enter a decree therefor ; and from such a decree there is no appeal. 6 When it modifies the de- cree, it may do so in either of several respects. For example, it may change a decree which was entered for the appellant with costs, to one without costs, and in that event it will re- quire the appellee to pay his own costs in the Supreme Court. 7 It may also change the amount of the decree, instead of remanding the case to the court below for a recom- putation.' Where it remands a case for further proceedings, 1 Rules of the Supreme Court of 6 Revised Statutes, Section 701. the United States, Rule 22. Elastic Fabrics Co. v. Smith, 100 * Hipp v. Babin, 19 Howard, 271, U. S. Ill, 18'79. 1856. ' O'Reilly v. Morse, 15 Howard 3 Brown v. Piper, 91 U. S. 41, 121, 1853. 1875. Parks v. Booth, 102 U. S. 106, 4 Troy Iron & Nail Factory v. 1880. Corning, 15 Howard 451, 1853. CHAP. XX.] ACTIONS IN EQUITY. 449 the proceedings prescribed may even extend to a trial at law, or by a jury in equity, of the questions of fact involved in the case. 1 657. A certificate of division of opinion, is a means of taking questions of law to the Supreme Court, where those questions arise in a case heard by two judges in the court be- low, and where those judges disagree about their proper solu- tion." No question of infringement or other question of fact can be taken to the Supreme Court in this method ; and such a certificate must state the precise points of law which are in- volved, or the case will be remanded without an answer. 8 1 Cochrane v. Deener, 94 U. S. 784, 3 Wilson v. Barnum, 8 Howard, 1876. 258, 1850. * Revised Statutes, Section 693. CHAPTER XXI. INJUNCTIONS. 658. Jurisdiction to graat injunc- tions. 659. Preliminary injunctions. 660. Bills for preliminary injunc- tions. 661. Notices of motions for prelimi- nary injunctions. 662. Motions for preliminary in- junctions. 663. Suspensions of motions for preliminary injunctions. 664. Temporary restraining orders. 665. Elements of prima facie rights to preliminary injunctions. 666. Prior adjudication. 667. Public acquiescence. 668. Duration of public acquiescence in a strict monopoly. 669. Durationof public acquiescence in a licensed monopoly. 670. Public acquiescence need not be universal to be efficacious. 671. Decrees pro confesso. 672. Consent decrees. 673. Defendent's admission of va- lidity. 674. Interference decisions. 675. The complainant's title. 676. Infringement. 677. Defences to motions for pre- liminary injunctions ; and first by way of traverse. 678. Defences by way of confession and avoidance. 679. Averting effect of prior adjudi- cation. 680. Averting effect of public ac- quiescence. 681. Averting preliminary injunc- tion by proving repeal or ex- piration of patent, or fault in title thereto. 682. Averting preliminary injunc- tion by proving license. 683. By proving estoppel. 684. By showing laches. 685. Preliminary injunction must generally follow a cause and an. application therefor. 686. Bonds instead of injunctions, where complainant grants li- censes. 687. Where infringing machinery embodies non-infringing feat- ures, also where it was con- structed under a junior patent. 688. Bonds required from complain- ants in certain cases. 689. Injunctions not averted by the existence of a remedy at law. 690. Injunctions pro confesso on withdrawal of opposition to a motion for an injunction. 691. Discretion of the court in granting or refusing injunc- tions. 692. Motions to dissolve preliminary injunctions. 693. Motions to dissolve for errors in point of law. 694. Motions to dissolve on account of newly discovered evidence. CHAP. XXI.] INJUNCTIONS. 451 695. Reinstatement of dissolved in- junctions. 696. Consequences of obedience or disobedience to injunctions which are subsequently dis- solved. C97. Permanent injunctions. 698. Refusal of permanent injunc- tion, because the patent has ex- pired. 699. Because the complainant has assigned the patent. 700. Because the defendant is dead, or. if a corporation, is dissolved. 701. Cessation of infringement no ground for refusal to enjoin. 702. Postponement of permanent injunctions. 703. Suspension of permanent in- junctions. 704. Dissolution of permanent in- junctions. 705. Injunctions granted independ- ent of other relief ; but no in- junctions issued in trivial cases, nor to restrain complainants from suing third parties. 706. The duration of injunctions generally limited by the term of the patent. 707. The duration of injunctions granted by district judges in vacation. 708. Attachments for contempts. 709. Improper defences to motions for attachments. 710. Penalties for violations of in- junctions. 658. JURISDICTION to grant injunctions to prevent the violation of patent rights, is conferred by statute upon the same courts that are vested with common-law jurisdiction in patent cases. 1 The statute provides that the jurisdiction shall be exercised according to the course and principles of courts of equity, and upon such terms as the court may deem reason- able. This twofold provision indicates the sources from which the existing rules applicable to such cases were drawn. They were drawn from the ordinary course and principles of courts of equity, and from a reasonable contemplation of the peculiar circumstances which attend patent rights and patent litigation. Some of those rules relate only to preliminary in- junctions, and others relate to permanent injunctions alone ; and the residue are equally applicable to both. It is the plan of this chapter to explain those three classes of rules, and to show how all of them combined make up a system which may guide the judicial discretion in nearly every variety of circumstances. 659. A preliminary injunction is one which is granted after the filing of the bill, and before the case is ready for an 1 Bevised Statutes, Section 4921. 452 INJUNCTIONS. [CHAP. xxi. interlocutory hearing. When granted, it is commonly granted before the tiling of the answer ; but it is sometimes issued after that stage of the case, and sometimes even after the com- plainant has introduced all his prima facie evidence. 1 Such an injunction may be dissolved at any time, and a motion to dissolve it may be made whenever an apparent cause for its dissolution becomes known to the party enjoined. If not sooner terminated by dissolution, or by a certain statutory limi- tation hereafter explained, such an injunction continues till the interlocutory decree ; and then it is dissolved or is made permanent according to the equities of the case as they appear on the interlocutory hearing. 660. A bill of complaint, in order to lay a foundation for a preliminary injunction, must state the particular prior adjudi- cation or acquiescence upon which the presumption of validity of the patent is based, 5 and must contain a specific prayer for that relief, and for the proper writ by means of which that relief may be enforced, 3 and must conform to those requisites of bills in equity which are set forth in the twentieth chapter of this book. 661. Due notice of a motion for a preliminary injunction must be served on the party sought to be enjoined from in- fringing a patent, before that motion will be heard by the court. This rule formerly had a sufficient foundation in a statute of 1793, which provided that no writ of injunction should be granted in any case without reasonable previous notice to the adverse party, or his attorney, of the time and place of moving for the same. 4 Portions of the section which contained that provision are embraced in the Revised Statutes,* but that provision was omitted from those statutes and was thereby repealed.' But there is still a foundation for the 1 Union Paper Bag Machine Co. v. 460, 1849. Newell, 11 Blatch. 550, 1874. 4 1 Statutes at Large, Ch. 22, Sec- 8 Parker v. Brant, 1 Fisher, 59, tion 5, p. 334. 1850. * Revised Statutes, Sections 716 3 Lewistoii Falls Mfg. Co. v. Frank- and 720. lin Co., 54 Maine, 402, 1867 ; Union Revised Statutes, Section 5596. Bank v. Kerr, 2 Maryland Chancery, CHAP. XXI.] INJUNCTIONS. 453 rule which is stated at the head of this section : a foundation not so direct, but quite as certain, as the other was while it existed. The Revised Statutes provide that the Supreme Court shall have power to prescribe from time to time, and in any manner not inconsistent with any law of the United States, the modes of proceeding to obtain relief in suits in equity in the circuit and district courts. 1 In pursuance of this authority the Supreme Court has prescribed an elaborate code of rules of practice for the courts of equity of the United States. Rule 55 of that series provides that special injunctions shall be grant- able only upon due notice to the other party. And it is cer- tain that all injunctions to restrain infringements of patents are special as distinguished from common injunctions. 8 A different line of argument on this subject, and one followed by a contrary conclusion, is to be found in one reported case," but the reasoning of that case does not appear to be con- vincing. 662. A motion for a preliminary injunction is heard in a summary way on ex-parte affidavits. 4 The complainant's affidavits in chief must show all the facts which are necessary to prima facie entitle him to such an injunction. 6 The defendant's affidavits must state all the facts upon which he bases his defence to the motion, and if those statements are by way of traverse, no further affidavits are admitted on the hear- ing ; but if they are by way of confession and avoidance, the complainant is permitted to read affidavits in reply, but to that reply, no rejoinder from the defendant is ever allowed. 8 All the affidavits may be made by the parties, or by any other per- sons ; but in either case they must state the facts positively, and not on information and belief, except upon the point that 1 Revised Statutes, Section 917 ; 4 Grover & Baker Sewing Machine Orr v. Littlefield, 1 Woodbury & Co. v. Williams, 2 Fisher, 133, 1860. Minot, 19, 1845. 6 Union Paper Bag Machine Co. 8 High on Injunctions, Section 6 ; v. Binney, 5 Fisher, 167, 1871. Purnell v. Daniel, 8 Iredell's Equity 6 Day v. Car-Spring Co., 3 Blatch. Reports (N. C.), 11, 1851. 154, 1854 ; Rogers v. Abbot, 4 Wash- 3 Yuengling v. Johnson, 1 Hughes, ington, 514, 1825. 607, 1877. 454: INJUNCTIONS. [CHAP. XXI. the complainant believes the person upon whose application the patent was granted, to have been the first inventor of the invention for which it was issued. 1 The complainant's bill may be used as an affidavit," and so also may the defendant's answer, if it is on file when the motion for a preliminary injunction is heard." But answers are commonly and properly drawn in such general terms that they are often of minor importance as defences to such motions, even where they are well concerted as pleadings. For ex- ample, where the answer says, on the question of infringe- ment, that the defendant never made, used, or sold any speci- men of the patented thing ; and where the affidavits of the complainant contain a description of what the defendant has done and contain proper expert testimony showing that those doings constitute infringement of the patent ; the general denial of the answer will go for nought on the hearing of a preliminary injunction. 4 The statements of the complain- ant's affidavits in chief are taken on the hearing to be true, so far as they are uncontradicted by the affidavits of the defend- ant ; 6 and the affidavits of the defendant are taken to be true so far as they are consistent with the complainant's affidavits in chief, and are not contradicted by his affidavits in reply. 8 All affidavits to be used to support or to oppose a motion for a preliminary injunction, ought to be served on the oppo- site counsel a reasonable time before the motion is argued. Where that is not done, the court may reject the affidavits, or, at its discretion, may allow them to be read, giving the oppo- site party the option to proceed with the hearing, or to take time to examine the affidavits, and where they admit of reply, to take other affidavits for that purpose. 7 663. Where, on the hearing of a motion for a preliminary 1 Young v. Lippman, 9 Blatch. 277, 1860. 1872. o Wells v. Gill, 6 Fisher, 89, 1879. s Young y. Lippman, 9 Blatch. 277, Cooper v. Mattheys, 3 Penn. Law 1872. Journal Reports, 40, 1842. 3 Parker v. Brant, 1 Fisher, 58, 7 Sterrick v. Pugsley, 1 Central Law 1850. Journal, 106, 1874. 4 Ely v. Mfg. Co., 4 Fisher, 64, CHAP. XXI.] INJUNCTIONS. 455 injunction, the complainant's moving papers are found to lack a necessary point which is presumably capable of being sup- plied, the court may suspend the motion to enable the com- plainant to supply it. 1 Such a lack and consequent suspension are not injurious to a defendant, because they merely operate to postpone that which he desires to be postponed as long as possible. No similar rule can, however, be invoked in favor of a defendant who has had reasonable notice of the motion, for if he could invoke such a rule, he could delay justice by his own neglect. If a demurrer is on file in the case, when a motion for a pre- liminary injunction comes on to be heard, the demurrer will be first heard and disposed of, even though that proceeding necessitates a postponement of the hearing of the motion. But if the demurrer is overruled, the defendant, in order to secure leave to contest the motion further, must file an affidavit that the demurrer was not filed for the purpose of delay, and must give security to pay the complainant the amount of any money decree to which the delay consequent upon the demurrer may afterward be found to entitle him." 664. A temporary restraining order may be made by the court, where there appears to be danger of irreparable injury from delay, whenever notice is given of a motion for a prelim- inary injunction ; and such an order may be granted with or without security, in the discretion of the court, or judge, and will continue in force till the motion is decided. 3 The object of this provision appears to be to give the judge time to con- sider whether to grant a preliminary injunction, instead .of deciding the question immediately upon the close of the argu- ment of a motion for such a writ. It does not appear to war- rant a restraining order before notice is actually served upon the defendant, nor indeed before the motion has been heard by the court, though the last member of this statement is less clearly true than the first. Even the first has been denied by 1 Hodge v. Railroad Co.. 6 Blatch. bury & Minot; 131, 1847. 85, 1868. 3 Revised Statutes, Section 718. 1 Woodwortb v. Edwards, 3 Wood- 456 INJUNCTIONS. [CHAP. xxi. one district judge ; but in order to deny it, he had to hold that a notice is "given" when a rule to show cause against a motion is entered in court. 1 But the statute does not provide for any rule to show cause. It provides for a notice which is given ; and no notice can be said to be given until it is served. 665. In deciding whether a given complainant has made out a prima facie case for a preliminary injunction to restrain infringement of a patent, the judge is guided by the presence or absence of two presumptions and one certainty. Those pre- sumptions relate to the validity of the patent and to the de- fendant's infringement thereof, and that certainty relates to the complainant's title thereto. If that certainty or either of those presumptions are absent in a given case, no pre- liminary injunction will be granted ; but such a writ will be granted where they are all present, unless the defendant inter- poses some good defence to the motion, or unless the court takes a bond from the defendant instead of subjecting him to an injunction. A special presumption that the patent is valid lies at the foundation of a patentee's right to a preliminary injunction. That presumption does not arise out of the unat- tended letters patent, but will always exist where the patent has been suitably adjudicated in a Federal court, and there held to be valid ; s or where the validity of the patent has been suitably acquiesced in by the public ; * or where the 1 Yuengling v. Johnson, 1 Hughes, 386, 1868 ; Goodyear Dental Vul- 607, 1877. canite Co. v. Evans, 3 Fisher, 390, * Orr v. Littlefield, 1 Woodbury & 1868 ; Goodyear v. Berry, 3 Fisher, Minot, 13, 1845 ; Woodworth v. Hall, 439, 1868 ; Goodyear v. Rust, 3 1 Woodbury & Minot, 248, 1846 ; Fisher, 456, 1868 ; Atlantic Giant Woodworth v. Edwards, 3 Woodbury Powder Co. v. Goodyear, 3 Bann. & & Minot, 120, 1847 ; Gibson v. Van Ard. 167, 1877 ; Green v. French, 4 Dresar, 1 Blatch. 532, 1850 ; Potter Bann. & Ard. 169, 1879 ; Kirby Bung v. Holland, 4 Blatch. 238, 1858 ; Par- Mfg. Co. v. White, 5 Bann. & Ard. ker v. Brant, 1 Fisher, 58, 1850 ; Pot- 263, 1880. ter v. Fuller, 2 Fisher, 251, 1862 ; 3 Goodyear v. Railroad Co., 1 Grover & Baker Sewing Machine Co. Fisher, 626, 1853 ; American Mid- v. "Williams, 2 Fisher, 134, 1860 ; dlings Purifier Co. v. Christian, 3 Potter v. Whitney, 3 Fisher, 77, Bann. & Ard. 48, 1877. 1866 ; Conover v. Mers, 3 Fisher, CHAP. XXI.] INJUNCTIONS. 457 defendant at bar has allowed a decree pro confesso to be taken against him ; ' or where the defendant does not deny the validity of the patent ; * and that presumption will sometimes exist where the patent has successfully undergone an inter- ference in the Patent Office.* 666. An adjudication in another case, in order to furnish a suitable foundation for a right to a preliminary injunction, must have resulted in favor of the patent in a regular hearing in equity, or on the trial of an action at law. 4 Of these, the former raises the stronger presumption, 6 but most of the considerations which apply to it, apply also to the latter. An interlocutory decree in another case, is as good a foundation for a right to an injunction as a final decree would be ; " be- cause an interlocutory decree settles all pending questions of validity, and a final decree merely reiterates its conclusions on that point. An adjudication of a prior suit based on the first term of a patent, may be made the foundation of a right to a preliminary injunction to restrain infringement of the ex- tended term of the same patent. 7 But no adjudication of a suit based on an original patent can be invoked as a basis for a preliminary injunction to restrain infringement of any new claim contained in a reissue thereof. 8 The difference be- tween a prior decree in equity and a prior verdict at law as foundations for an injunction, seems to be this. A decree cannot be ignored on any ground which merely tends to show that the judge who rendered it misunderstood or mis- weighed the evidence upon which it was based ; while a ver- dict of a jury may be disregarded if the judge who is invited 1 Schneider v. Bassett, 13 Fed. 1865. Eep. 351, 1882. s Goodyear v. Mullee, 3 Fisher, Sickels v. Mitchell, 3 Blatch. 420, 1868. 548, 1857 ; New York Grape Sugar 6 Potter v. Fuller, 2 Fisher, 251, Co. v. American Grape Sugar Co., 10 1862. Fed. Rep. 835, 1882. ' Clum v. Brewer, 2 Curtis, 507, 3 Pentlarge v. Beeston, 14 Blatch. 1855 ; Tilghman v. Mitchell, 4 Fish- 354, 1877 ; Smith v. Halkyard, 16 er, 615, 1871. Fed. Rep. 414, 1883. 8 Poppenhusen v. Falke, 2 Fisher, 4 Doughty v. West, 2 Fisher, 559, 181, 1861. 458 INJUNCTIONS. [CHAP. xxi. to base a preliminary injunction upon it, is of opinion that it was not justified by the facts. 1 667. Public acquiescence, sufficient to create a presumption of validity, and therefore sufficient to furnish a foundation for a right to a preliminary injunction, may arise out of either of two classes of facts. It may arise where the patentees made and sold specimens of the patented article for many years, during which no other person assumed to make any such speci- mens ; a or it may arise where the patentee long licensed others to make, use, or sell such specimens, while nobody assumed to do either without such a license from him, and the acquiescence is quite as positive in this case as in the other. 668. The length of time necessary to make exclusive pos- session, of the first sort, available in a motion for a preliminary injunction, depends upon the nature of the invention, and to the extent to which a good invention of the sort would natu- rally be used if it were free to the public ; and upon the popu- larity of that particular invention with that part of the public likely to want an article of the kind. 3 Where nobody but the patentee had any use for the article during the time of the alleged acquiescence, or where its merits were prized so low that nobody else cared to adopt it ; no lapse of time has any tendency to raise a presumption that the patent is valid. Ac- quiescence in claims which nobody cared to dispute when the acquiescence occurred, has no tendency to show that those claims are valid. But where all persons, other than the owner of the patent, refrain from making, using, or selling speci- mens of the patented article merely because it is patented, and notwithstanding it would otherwise be for their interest to adopt it ; their acquiescence shows their conviction that the patent is valid : a conviction presumably based on inquiry, because persons are not likely to acquiesce in adverse rights without any investigation of their soundness. 4 In a case of 1 Sickels v. Young. 3 Blatch. 297, 3 Doughty v. West, 2 Fisher, 559, 1855 ; Day v. Hartshorn, 3 Fisher, 1865. 32, 1855. * Grover & Baker Sewing Machine 2 Sargent v. Seagrave, 2 Curtis, Co. v. Williams, 2 Fisher, 134, 1860. 657, 1855. CHAP. XXI.] INJUNCTIONS. 459 the latter sort, any acquiescence which is shown by lapse of time to be general and to be genuine, will be sufficient to sustain a preliminary injunction. 1 Two years have been found to be ample in a case where the patentee made and sold 105,000 specimens of his patented apple-paring machine during that time, 2 and in another case, eight years, in which the patentee made and sold 150 specimens of his patented machine for cutting leather for shoe soles, were held to be sufficient. 3 669. The length of time necessary to make exclusive pos- session, of the second sort, available on a motion for a prelimi- nary injunction will depend largely upon whether the licenses granted were granted in consideration of the payment of sub- stantial royalties, or for such an insignificant price as indicates that they were issued for the sole purpose of raising a pre- sumption of public acquiescence. In the former case, it is safe to assume that sales of licenses will be quite as rapidly efficacious in the desired direction, as sales of specimens of the patented invention ; 4 while in the latter case, a long and genuine payment of royalties will be necessary to give the licenses any importance in respect of preliminary injunctions against third parties. 670. Public acquiescence is strengthened rather than weakened, as a foundation to a right to a preliminary injunc- tion, by the fact that some persons for a while refused to join in it, but on receiving further information, submitted to the exclusive right claimed by the patentee. Such a submission is generally the most persuasive degree of acquiescence. 5 Nor is universal acquiescence necessary to be shown as existing at the time of the motion ; for if it were necessary and were shown, it would prove that the defendant himself is not infringing the patent, and thus negative that part of the foundation of the 1 Orr v. Littlefield, 1 Woodbury & 1852. Minot, 17, 1845. 4 Grover & Baker Sewing Machine J Sargent v. Seagrave, 2 Curtis, Co. v. Williams, 2 Fisher, 138, 1860. 557, 1855. 6 Sargent v. Seagrave, 2 Curtis, , 8 Foster v. Moore, 1 Curtis, 279, 556, 1855. 4CO INJUNCTIONS. [CHAP. XXI. case. 1 But a preliminary injunction will not be granted on any basis of acquiescence where the defendant has been long in possession and use of the invention, adverse to the claim of the complainant, and under a claim and color of right. 8 No acquiescence in an original patent can be made the basis of a right to a preliminary injunction to restrain infringement of any claim in a reissue of that patent, unless that claim was also contained in the original.* 671. A decree pro confesso entered in a case, raises a suffi- cient presumption of the validity of the patent, to support a right to a preliminary injunction in that case ; 4 but there is no ground for giving such a decree such an operation in any case against another defendant. 6 672. A consent decree is one which is entered by the con- sent of the defendant, at some stage of the case after the filing of the answer, and before the judge has decided the case on its merits. In some branches of jurisprudence, such a decree may raise as strong a presumption of the validity of the com- plainant's case, as could be raised by a decree based on a deci- sion of the court. That may be the fact where the nature of the case shows that it would have been distinctly more advan- tageous for the defendant to win the suit than to be defeated. But in patent cases, it would often be pecuniarily better for the defendant to consent to a decree against him, than to win the suit, if by doing the former he could enable the complain- ant to secure preliminary injunctions against third parties. If he wins, he secures a right to continue his doings, but he also practically secures the same right for other persons, and thus throws the business open to general competition. If by con- senting to a decree against himself, a defendant could secure a license on favorable terms, and could enable the complainant to prevent all competition by means of preliminary injunc- tions, it would frequently happen that the defendant's net prof- 1 McComb v. Ernest, 1 Woods, Co. v. Williams, 2 Fisher, 144, 1860. 206, 1871. 4 Schneider v. Bassett, 13 Fed. * Isaacs v. Cooper, 4 Washington, Rep. 351, 1882. 259, 1821. Everett v. Thatcher, 3 Bann. 4 8 Grover & Baker Sewing Machine Ard. 437, 1878. CHAP. XXI.] INJUNCTIONS. 461 its would be larger than they would have been if he had won the suit. To win the suit would often operate to reduce prices and profits, to an amount in excess of the aggregate of the decree to which he might consent and the royalties he might promise to pay. In such a case a defendant could better afford to pay the decree and the royalties, than to have had complete success in his defence. For these reasons, a consent decree in a patent case can never be a proper foundation for a right to a pre- liminary injunction against third persons ; unless it appears from the nature of the patented thing, or from convincing evidence, that the defendant consented to the decree because his defence had become hopeless, and not because it had become inexpedient regardless of its strength. This fact can never appear from the nature of the patented thing, where that thing is an article of commerce ; because the making and selling of articles of commerce is subject to those laws of trade which are sure to diminish profits whenever monopoly is replaced by com- petition. The considerations stated in this paragraph are doubtless those which have caused Federal judges to disregard consent decrees when deciding upon applications for prelimi- nary injunctions in patent cases. 1 It is true that the same judge who made the last of the decisions just cited, once based a preliminary injunction partly on a consent decree in an- other case," but he did so on the ground that the circum- stances under which the decree was entered, convinced him that it was consented to because the defendant was unable to make a successful defence. 673. Where a defendant admits or does not deny, in his pleadings, the validity of the patent upon which a preliminary injunction is sought against him ; there seems to be no reason why such an admission or lack of denial should not raise a sufficient presumption of that validity to furnish a foundation to a right to a preliminary injunction in that case.' As be- 1 Spring v. Domestic Sewing Ma- '* Steam Gauge & Lantern Co. v. chine Co., 4Bann. & Ard. 427, 1879 ; Miller. 8 Fed. Rep. 314, 1881. Hayes u. Leton, 5 Fed. Rep. 521,1881; New York Grape Sugar Co v. De Ver Warner v. Bassett, 7 Fed. American Grape Sugar Co., 10 Fed. Bep. 468, 1881. Hep. 835, 1882. 462 INJUNCTIONS. [CHAP. xxi. tween the parties to a motion, the court may properly assume every statement of fact to be true which is made by the com- plainant, and expressly or tacitly admitted by the defendant. The same assumption has sometimes been asked for by a com- plainant, where the defendant in his affidavits denied the validity of the patent, but did so on grounds that were bad in point of law. The argument to support such a request is that a frivolous denial is no denial at all, and is therefore a tacit admission. The first answer to that argument is that the court will not decide, on a motion for a preliminary injunction, whether the denial is frivolous or not, and the second answer is that even a frivolous denial is not the same thing as an ad- mission. 674. An interference decision of the Patent Office raises a sufficient presumption of validity to furnish a foundation for a preliminary injunction, where the defendant is the person, or the legal representative or assignee of the person, who was defeated in the interference, and where he denies the validity of the patent on no other ground than that the interference decision was wrong. ' But such an interference decision can- not be invoked against third parties, because it does not rise to the dignity and force of an adjudication of a court. And it cannot be invoked as against any defence not involved in it, because it has no relevancy to any such defence.* 675. The complainant's title to the patent upon which a preliminary injunction is asked must be clear, or the injunc- tion will be refused.' The best evidence of that title is found in the patent, if the complainant is the patentee ; and if he is an assignee or grantee, he should produce the original assign- ments or grants which constitute his title, or produce duly certified copies thereof. Where the complainant's title papers require judicial construction, in order to determine their legal effect, it is the duty of the court to give them that construc- tion upon a motion for a preliminary injunction, rather than 1 Pentlarge v. Beeston, 14 Blatch. Hep. 856, 1880. 364, 1877; Holliday v. Pickhardt, Mowry v. Kailroad Co., 5 Fisher, 12 Fed. Eep. 147, 1882. 587, 1872. 8 Greenwood v. Bracher, 1 Fed. CHAP. XXI.] INJUNCTIONS. 4G3 to postpone the question to a final hearing, unless it is made to appear that evidence aliunde is necessary to their proper interpretation. 1 676. Infringement or danger of infringement by the defendant, must be clearly proven by a complainant in order to entitle him to a preliminary injunction. 3 Precisely what facts will give rise to such a probability of future infringement as will justify a preliminary injunction without proof of past infringement, cannot specifically be stated. Courts will never insist on absolute proof of what the defendant will do if not enjoined ; for such proof can never be produced, and because it cannot harm a person to enjoin him from doing a thing which he would not do any way. A moderate probability that a defendant intends to do something which would clearly infringe the complainant's patent will therefore be sufficient to entitle the latter to a preliminary injunction in an otherwise proper case. Proof of infringement cannot be made by affidavits which merely state that conclusion of fact. The complainant must prove the specific character of the defendant's doings. 3 Upon that evidence the court will examine and decide the question of infringement in the light of whatever expert testimony the case may contain, 4 and in the light of whatever construction of the patent it finds on examination to be just.* But if the court is unable to arrive at a conclusion without the aid of further expert testimony, it will refuse to grant the injunction till that testimony is supplied.' 1 Clum v. Brewer, 2 Curtis, 507, McCrary, 160, 1880. 1855 ; Dodge v. Card, 2 Fisher, 116, 4 Blanchard v. Beeves, 1 Fisher, 1860. 105, 1850. 2 Pullman v. Kailroad Co., 5 Fed. * Many v. Sizer, 1 Fisher, 33, 1849 ; Rep. 72, 1880 ; Marks v. Corn, 11 Clum v. Brewer, 2 Curtis, 507, 1855 ; Fed. Hep. 900, 1881 ; Coburn v. Coburn v. Clark, 15 Fed. Rep. 807, Clark, 15 Fed. Rep. 807, 1883 ; Wood- 1883. worth v. Stone, 3 Story, 752, 1845; 6 United States Annunciator Co. u. Poppenhusen v. Comb Co., 4 Blatch. Sanderson, 3 Blatch. 186, 1854; Howe 187, 1858 ; White v. Heath, 10 Fed. v. Morton, 1 Fisher, 600, 1860 ; Boyd Rep. 293, 1882. v. McAlpin, 3 McLean, 430, 1844. * Kirby Bung Mfg. Co. v. White, 1 464 INJUNCTIONS. [CHAP. xxi. In order to entitle a complainant to a preliminary injunc- tion, it is not necessary for him to prove any infringement to have been committed or threatened within the particular dis- trict in which the court exercises jurisdiction ; ' nor that the defendant's infringement has not ceased before the motion is heard." Indeed no injunction can be averted by affirmative evidence that the defendant has ceased to infringe, even though coupled with a promise that he will infringe no more.' 677. The defences which a defendant may make to a motion for a preliminary injunction may be by way of traverse, or by way of confession and avoidance. A defence of the former sort consists in denying, and attempting to disprove, one or more of the facts which constitute the complainant's prima facie case. A denial alone is useless, even where it is embodied in an answer. 4 Where the denial is supported by affidavits which contradict those of the complainant, the judge will refuse the injunction if he believes the defendant's affi- davits to be the true ones, or if he is unable to decide which set of deponents tell the truth. 6 No remedy invoked in patent cases is so summary in operation or so dangerous to justice as a preliminary injunction, and the courts will not apply that remedy to cases where the complainant's prima facie evidence of a right thereto, is overthrown or seriously damaged by the evidence of the defendant. 678. Defences by way of confession and avoidance to motions for preliminary injunctions, may confess and avoid the adjudication or acquiescence upon which the plaintiff bases the presumption of the validity of his patent ; or may interpose any one of several facts entirely outside of the com- plainant's prima-facie case. 1 Wilson v. Sherman, 1 Blatch. er, 112, 1866 ; Goodyear v. Berry, 3 541, 1850 ; Wheeler v. McCormick, 4 Fisher, 439, 1868. Fisher, 433, 1871 ; Thompson v. 3 Rumford Chemical Works v. Mendelsohn, 5 Fisher, 188, 1871 ; Vice, 14 Blatch. 179, 1877. Macaulay v. Machine Co., 9 Fed. 4 Clum v. Brewer, 2 Curtis, 507, Rep. 698, 1881. 1855. 1 Jenkins v. Greenwald, 2 Fisher, 6 Cooper v. Mattheys, 3 Penn. Law 37, 1857 ; Potter v. Crowell, 3 Fish- Journal Reports, 40, 1842. CHAP. XXI.] INJUNCTIONS. 465 679. The effect of an adjudication may be averted by evidence of some good defence to the patent, together with evidence showing that defence not to have been interposed in the prior adjudicated, case. 1 So also, the effect of a prior adjudication may sometimes be averted by showing that the case adjudged involved questions of nicety and importance, and has been taken 'to the Supreme Court for review," or has gone no further than a verdict of a jury which is still pending on a motion for a new trial. 3 But courts will not always disregard adjudications which are thus suspended. They are a good foundation for preliminary injunctions, unless the defendant can convince the judge that they were wrong. 4 The effect of a prior adjudication cannot be averted by showing that there has been an adjudication against the validity of the patent, if it also appears that the lost cause was decided on a part only of the material evidence ; & nor by showing that the validity of the patent is in question in some other case which has long been pending and still awaits adjudication. 8 Where the patent sued upon is a reissue of the one adjudicated, a substantial doubt of the validity of the reissue as a reissue, must be solved against a motion for a preliminary injunc- tion. 7 680. The effect of acquiescence, as a foundation for a pre- liminary injunction, may be averted by evidence that it was not general, or was not genuine : by proof that while some acquiesced in the patent, many others did not ; or by proof 1 Parker v. Brant, 1 Fisher, 58, 3 Day v. Hartshorn, 3 Fisher 34,. 1850 ; Union Paper Bag Machine 1855. Co. v. Binney, 5 Fisher, 168, 1871 ; 4 Forbush v. Bradford, 1 Fisher,. American Nicolson Pavement Co. 317, 1858 ; Day v. Hartshorn, 3 Fish- v. Elizabeth, 4 Fisher, 189, 1870 ; er, 32, 1855 ; Morris v. Mfg. Co. 3 1 Bailey Wringing Machine Co. v. Fisher, 70, 1866 ; Wells v. Gill, 6 ; Adams, 3 Bann. & Ard. 97, 1877 ; Fisher, 89, 1872. Goodyear v. Allyn, 6 Blatch. 35, 5 United States Stamping Co. v;. 1868; Robinson v. Randolph, 4 Bann. King, 4 Bann. & Ard. 469, 1879. & Ard. 163, 1879; Page v. Telegraph " Atlantic Giant Powder Co. v. Co. 18 Blatch. 125, 1880. Goodyear, 3 Bann. & Ard. 161, 1877. 9 Morris v. Mfg. Co. 3 Fisher, 70, ' Poppenhusen v. Falke, 2 Fisher, , 1866. 181, 1861. 4:60 INJUNCTIONS. [CHAP. xxi. that those who did acquiesce, did so collusively and not be- cause they believed the patent to be invulnerable. And the effect of acquiescence may also be averted by evidence or arguments which strongly tend to show that the patent is really invalid. 1 681. The fact that the patent sued upon has been repealed, or that it has expired by its own limitation, or because of the expiration of some foreign patent for the same invention, is of course a good defence to a motion for a preliminary injunc- tion ; as also is any fact which overthrows the title of the complainant. 682. A license is a good defence to a motion for a pre- liminary injunction ; and where the affidavits leave the exist- ence of a valid license in doubt, a preliminary injunction will be refused. 2 Where the question of license depends upon the construction of documents, the court will constme them on a motion for a preliminary injunction, unless it is made to appear that evidence exists which is proper and necessary to be produced in order to enable the judge to arrive at the inten- tion of the parties to an ambiguous instrument. 3 Where the license set up has been forfeited for non-payment of the royalty, a preliminary injunction will be granted, in an other- wise proper case, unless the defendant pays that royalty within some reasonable time to be fixed by the court ; 4 and where it has been forfeited by a forbidden use of the patented thing, a preliminary injunction may be granted as to that use, but not as to the kind of use authorized by the license.* The principle of these precedents appears to be that a preliminary injunction will not be used to enforce a forfeiture, when the doings which caused the forfeiture can be otherwise compen- sated. So, also, a preliminary injunction will be refused where the defendant had a license which he forfeited by 1 Bradley & Hubbard Mfg. Co. v. 165, 1868. The Charles Parker Co. 17 Fed. Rep. 4 Woodworth v. Weed, 1 Blatch. 240, 1883. 165, 1846 ; Goodyear v. Rubber Co. 9 Beane v. Orr, 2 Bann. & Ard. 176, 3 Blatch. 455, 1856. 1875. 6 Wilson v. Sherman, 1 Blatch. 536, * Hodge v. Railroad Co. 6 Blatch. 1850. CHAP. XXI.] INJUNCTIONS. 467 omission to pay the royalty, if that omission was necessitated by bad faith on the part of the complainant. ' 683. Estoppel is also a good defence to a motion for a preliminary injunction, and will prevail against a motion for that relief, upon the same facts that would make it prevail in an action at law. 8 684. Laches is a good defence to a motion for a prelimi- nary injunction ; 3 and delay works laches, unless it is excused by some fact which renders it reasonable. 4 The delay which, if unexcused, works laches in respect of an application for a preliminary injunction, is that which occurs after the infringe- ment sued upon was committed, 6 and not any delay which occurred before that time. Delay after the infringement, may occur before the suit is brought, or it may occur after that event, and before any motion is made for a preliminary injunc- tion. Three months' delay of the first kind, for which there was no particular excuse, and which caused no injury to the de- fendant, has been held not to constitute laches ; " but in another case, eighteen months' ' and in another, two years' delay was held to have that effect ; e and in still another, a delay of two years by the then owners of the patent, was held to preclude their assignees from obtaining a preliminary in- junction.' Two years' delay to sue was excused in one case on the ground that the complainant was much occupied with other business during the time, and that he repeatedly notified the defendant to cease his infringing. 10 The pendency of a test case under a patent is also a good excuse for delay in 1 Crowell v. Parmeter, 3 Bann. & Union Paper Bag Machine Co. Ard. 480, 1878. v. Binney, 5 Fisher, 167, 1871. 8 Sections 467 to 469 of this book. ' Hockholzer v. Eager, 2 Sawyer, 1 Hockholzer v. Eager, 2 Sawyer, 363, 1873. 363, 1873. Sperry v. Ribbans, 3 Bann. A 4 Wortendyke v. White, 2 Bann. & Ard. 261, 1878. Ard. 26, 1875 ; Green v. French, 4 9 Spring v. Machine Co. 4 Bann. A Bann. & Ard. 169, 1879 ; Collignon Ard. 428, 1879. v. Hayes, 8 Fed. Rep. 912, 1881. ' Collignon v. Hayes, 8 Fed. Rep. 8 American Middlings Purifier Co. 912, 1881. v. Christian, 3 Bann. except only tho second one just mentioned, and even as to that it would not be conclusive. 1 734. To determine what is the proper standard of com- parison in a particular case, it is not necessary for the com- plainant to affirmatively prove that a particular thing was ab- solutely the next best thing to his invention at the time of the infringement. Such a requirement would not be reasonable, because it could never be performed. It would involve evi- dence enough to negative the existence of a better thing than the one fixed upon ; and to prove that no better thing existed anywhere would obviously be impossible. The regular course of practice on the point is for the complainant to select what 1 Sections 555, 556, and 563 of this book. 500 PEOFITS. [CHAP. xxn. appears to him to be the proper standard of comparison, and to produce evidence to prove what advantage the defendant derived from using the complainant's invention over what he could have derived from using the thing so selected. Where the defendant knows of no standard of comparison more favor- able to himself than the one selected by the complainant, the only remaining issue relates to the utility and cheapness of that thing, as compared with the complainant's invention. 1 Where the defendant is not satisfied that the complainant has made the proper selection of a standard of comparison, he may select another, and may produce evidence to show its utility and cheapness as compared with that of the invention covered by the patent in suit ; and when the case comes to a hearing before the master, the first question to be decided by him will be as to which of the parties has made the proper selection. When that point is settled, all evidence about the merits of the other proposed standard will become and remain im- material to the case. For this reason it is always best for the interest of a party to make the proper selection if he can, and it is never judicious to make one which cannot be sustained before the master and the courts, no matter how favorable it may be to the party who selects it. The true standard of comparison in a particular case is that thing which, next to the complainant's invention, could have been most advantageously used by the defendant in place of that invention at the time he used the latter. To determine this point, comparative utility is the primary guide, but regard must also be had to cheapness, for the advantage contemplated by the rule in Mowry v. Whitney is the equalized result of these two elements. The cost of a thing, and of the right to use it, if that right is the subject of a patent, must be taken into account, together with its utility, when selecting a stand- ard of comparison, and when comparing a selected standard, with the invention unlawfully used by the defendant. 735. The rule in Mowry v. Whitney has no application to any of those cases of infringement which consist in making 1 Emigh v. Eailroad Co. G Fed. Eep. 285, 1881. CHAP. XXII.] PROFITS. *>Q\ and selling a patented article, or in either of those acts alone. In such cases the infringer's profits are ascertained by quite different rules. 1 In Elizabeth v. Pavement Co., the in- fringement consisted only in making the patented pavement to order ; that is to say, it consisted in making and selling the patented article. The defendants sought to have the profits determined, under the rule in Howry v. Whitney, by setting up other pavements as standards of comparison ; but the Supreme Court held their position on the point to be without foundation. 11 The rule in Mowry v. Whitney was also unsuc- cessfully invoked in the case of Burdett v. Estey, though the argument in favor of its application was supported by evi- dence that the defendant might have made and sold a different device at nearly or quite the same profit that he derived from making and selling the device covered by the complainant's patent. 3 736. The questions which relate to interest on infringers' profits, are questions which still await a comprehensive answer. It is not possible to reconcile the Supreme and Circuit Court cases which relate to the subject ; but it is possible to show the direction in which the ablest of those decisions, and the principles of law which bear upon the point, seem to be tending. The first Supreme Court case in which the matter was directly treated was that of Silsby v. Foote. 4 In it the court below allowed interest which accrued prior to the final decree, but a majority of the Supreme Court was of opinion that there was error in the allowance, and the item was accordingly ordered to be deducted from the account. No reasons were assigned by the majority for its opinion, nor by the minority for its dissent. A judicial decision without any statement of reasons to support it, is of course binding upon the parties to the litigation in which it is rendered, and it is doubtless citable as a precedent as far as it can be supported by good reasons 1 Sections 717 to 724 of this book. 569, 1880. * Elizabeth u. Pavement Co. 97 * Silsby v. Foote, 20 Howard, 386, U. S. 141, 1877. 1857. ''Burdett u. Estey, 3 Fed. Eep. 502 PROFITS. [CHAP. xxn. subsequently suggested in its behalf. But where no reasons are given by the judges, and none are apparent to the bar, such a decision ought not to be incorporated into the law ; because it may have been based on considerations which were peculiar to the case in hand and are without relevancy to the general principle involved in other similar cases. The next case was Mowry v. Whitney. 1 Interest before the final decree was disallowed in it, for the assigned reason that profits were recoverable and were recovered merely as the measure of the complainant's damages ; and that as damages are generally unliquidated till settled by the judg- ment of a court, they do not generally draw interest till so settled. But the doctrine which constitutes the first element of this reason is no longer the accepted view of the Supreme Court on the subject to which it relates. The present rule is that infringers' profits, when allowed, are given as a substitute for damages, and are ascertained and treated as though the in- f ringer were a trustee of the patentee in respect to those profits.* It is also apparent from other Supreme Court cases that equity does not decree infringers' profits, on any such doctrine as that they are really damages under another name. A court of equity may indeed assess damages in addition to profits, under the present statute ; ' but it follows the law in so doing, and ascertains them by means of the legal rules established for that purpose. 4 The Supreme Court has re- peatedly refused to measure a plaintiff's damages by the de- fendant's profits in actions at law ; 6 and therefore courts of equity will not measure those damages in that way. Indeed, no judge can logically say that he has ascertained a complain- ant loss, by ascertaining a defendant's gain ; for there are no facts which can operate to make the two sums coincide in amount. Moreover, if infringers' profits were the measure of 1 Mowry v. Whitney, 14 Wallace, 4 Chapter XIX. of this book. 652, 1871. & Seymour v. McCormick, 16 How- * Root v. Railway Co. 105 U. S. ard, 480, 1853 ; New York v. Ransom, 214, 1881. 23 Howard, 487, 1859 ; Packet Co. v. Revised Statutes, Section 4921 ; Sickels, 19 Wallace, 611, 1873. CHAP. XXII.] PROFITS. 503 patentees' damages, decrees for such damages would go against all the joint infringers in a case, regardless of which of them appropriated the proceeds of their joint wrong-doing. 1 But the Supreme Court has refused to approve such a decree, on the express ground that profits and not damages were then the only subject of inquiry and recovery in equity. 2 It appears, therefore, that the opinion of the Supreme Court in Mowry v. Whitney, upon the point of the recoverahility of interest on infringers' profits, cannot stand as a precedent, now that the primary element of its foundation has been denied an existence by that tribunal. The same remark applies also to the similar declarations which are to be found in two other Supreme Court cases. s 737. The circuit courts have usually treated the subject of interest on infringers' profits in such a way as to indicate an opinion that the earlier holdings of the Supreme Court on that subject were not likely to be permanently adhered to by that tribunal. Justice NELSON, who delivered the opinion in Silsby v. Foote, was evidently opposed to its disallowance of interest, for he had very lately allowed interest which accrued prior to a final decree in a similar case. 4 Nor did he feel bound to follow the decision in Silsby v. Foote, even after it was rendered, for he subsequently concurred in a decree for infringers' profits and twenty years' accrued interest thereon.* So also, Justice BLATCHFORD afterward rendered a decree for such interest to the amount of more than sixty thousand dollars, computing it from the end of each year of the in- fringement, upon the profits which were derived during that year.' It is true that his decree was reversed by the Supreme Court, but it was reversed on the question of infringement alone,' and the Supreme Court afterward unanimously de- ' Cooley on Torts, p. 135. 1857. * Elizabeth v. Pavement Co. 97 5 Troy Iron and Nail Factory v. U. S. 140, 1877. Corning, 6 Blatch. 355, 1869. * Littlefield v. Perry, 21 Wallace, ' Tilghman v. Mitchell, 9 Blatch. 229, 1874 ; Parks v. Booth, 102 U. S. 17, 1871. 106, 1880. i Mitchell v. Tilghman, 19 Wai- 4 Tatham v. Lowber, 4 Blatch. 87, lace, 287, 1873. 504 PROFITS. [CHAP. xxn. cided that its own decision on that point was wrong. 1 Even after Mowry -y. Whitney and Littlefield v. Perry were decided by the Supreme Court, large sums of interest which accrued on infringers' profits prior to the final decrees, were allowed in circuit court cases, on the ground that the defendants ought to pay interest on their profits for the time they wrongfully detained those profits from their true owners." 738. The primary principle involved in this question of interest, is that equity treats an infringer as though he were a trustee for the patentee in respect of the inf ringer's profits.' To ascertain how equity will treat an infringer in respect of interest on the profits which he derived from his infringement, it is therefore only necessary to ascertain how it treats trustees in respect of interest on trust funds. Chancellor KENT is an excellent authority on this point. He held that where trustees converted property of the cestuy gue trust into cash, and mixed that cash with their own funds, and used it in their own business, they were chargeable with legal interest thereon.* That is substantially the conduct of infringers of patents. They convert patented property into cash when they make and sell, or sell, or use specimens of patented inventions at a profit. That cash is always mixed with funds of the infringer, in that when received by him it is always a part of a larger sum. Where the infringement consists in making and selling, that larger sum includes the cost of both those transactions ; and where it consists in selling, that larger sum includes the cost of selling and of buying ; and where the infringement consists of using only, that larger sum includes the profits which might have been derived from using some other invention in exist- ence at the time of the infringement. So also, infringers regularly use in their own business the profits which their in- fringements bring to their coffers. Those profits may some- times remain with other funds for a while on deposit in a 1 Tilghman v. Proctor, 102 U. S. Rep. 571, 1880. 707, 1880. Boot v. Railway Co. 105 U. S. * Steam Stone Cutter Co. v. Wind- 214, 1881. sor Manufacturing Co. 17 Blatch. * Brown v. Rickets, 4 Johnson's 24, 1879 ; Burdett v. Estey, 3 Fed. Chancery (N. Y.), 303, 1820. CHAP. XXII.] PROFITS. 505 bank, but even that is a use of those profits in the business of the depositor. 1 Chancellor KENT held, in the case cited from him, that a trustee must not be a gainer from his employment of the trust funds, and expressed surprise that such a just and well-estab- lished point of law should have been drawn in question. In applying that rule to an infringer of a patent, when treating him as though he were a trustee, it will generally be found that a decree for legal interest on the profits he derived from his infringement is the proper order to make ; because it can seldom be known precisely how much the infringer did gain from his use of those profits, and because, in the absence of such information, a decree for legal interest is the nearest ap- proach that can be made to perfect justice. It is open to the patentee to prove, if he can, that the use which the infringer made of those profits resulted in a rate of gain larger than the legal rate of interest ; but it is not open to the infringer to prove that he traded with those profits and lost thereby, or that he gained less than the legal rate of interest would have brought him. These propositions are both in accordance with a rule w r hich applies to trustees : the rule which provides that where a trustee deals with the trust property for his own advantage, he may be charged with his gains at the option of the cestuy que trust, or with legal interest, if that would be more beneficial to the equitable owner of the trust property. 1 Relevant to the precise time when interest on infringers' profits begin to run against infringers who receive them, the proper and equitable rule seems to be that adopted by Justice BLATCHFORD. 3 It computes the amount of profits which were derived by an infringer in each year of his infringement, and charges him with simple interest at the local legal rate on that amount, from the end of that year till the date of the final decree. This rule gives the infringer an average of half a year in which to invest those profits before interest begins to 1 Duffy v. Duncan, 35 New York, 113, 1872. 191, 1866 ; Perry on Trusts, Section 3 Tilghman v. Mitchell, 9 Blatch. 46 *. 17, 1871. * Norris's Appeal, 71 Penn. Stat. 506 PROFITS. [CHAP. xxn. accrue against him, and it does not assume that he so invested them as to derive compound interest therefrom. 739. The proceedings by which profits are ascertained may now become the theme of treatment. After an interloc- utory decree is entered, directing a master commissioner of the court to take and report an account of the defendant's profits, or appointing a master pro hac vice for that purpose ; it becomes the business of the complainant to introduce evidence before such master, to prove the amount of those profits. The complainant must take the initiative. It is not the prov- ince of the master to suggest any specific line of proof, or theory of accounting. His function is to pass upon whatever evidence the complainant produces, in the light of whatever is produced by the defendant.' 740. The evidence upon which the master may base his report may consist of any evidence taken in the case prior to the interlocutory decree,* and of documents introduced and depositions taken by the parties for the express purpose of the accounting, and of testimony taken viva voce in the presence of the master ;* and of personal examination by him of the structures or processes which are involved in the questions before him.* If the required documents are not produced voluntarily, the master may require their production ; and any necessary depositions may be taken upon commissions to be issued upon his certificate, from the clerk's office ; or they may be taken according to the acts of Congress. 6 When testi- mony is taken viva voce before a master, either party may require that it be taken down in writing, in order that, if necessary, it may be used by the court.' In the course of an accounting before a master, that officer has full authority to do all acts and to direct all proceedings which he may deem necessary and proper to the justice and merits of the case/ 1 Garretson v. Clark, 4 Bann. & * Equity Rule 77 ; Revised Stat- Ard. 537, 1879. utes, Sections 863, 864, and 865 ; 8 Equity Rule 80. Section 535 of this book. a Equity Rule 77. Equity Rule 81. 4 Piper u. Brown, 1 Holmes, 198, ' Equity Rule 77. 1873. CHAP. XXII.] PROFITS. 507 If, for example, an account to be transcribed or deduced from the defendant's books, is necessary to a just decision of the cause, the master may make an order that the defendant fur- nish such an account by a certain day ; and such an order, when served on the defendant by any disinterested person, must be obeyed, or the defendant will be guilty of contempt of court for not obeying it. ' Such is an outline of the pre- scribed proceedings in accordance with which evidence may be produced before a master on an accounting ; but the parties may by stipulation vary those proceedings in many respects. It is sometimes customary for counsel, by mutual agreement, to take all the testimony in an accounting, by depositions taken before any person duly authorized to administer the necessary oaths, and to print the whole in one or more pamphlets or books, and to call on the master for no action in the case until the questions involved are ready to be argued before him on the evidence so printed. 741. Objections to evidence, in order to be availing, must be made when the objectionable piece of evidence is offered, or the objectionable question is put, or the objectionable an- swer is given. If the master is present at the time, he ought to rule upon the objection at once, and if either party would appeal from that ruling, he must enter an immediate objection thereto. If the ruling is against the evidence objected to, it is necessary for the party who offers the evidence, if he would appeal from the ruling, to do so by an immediate motion to the court to direct the master to reverse his decision upon the point. The reason for this practice is that if such an appeal could be taken in an exception to the master's report, it would, when taken successfully, necessitate a recommittal of the case to the master, in order to enable him to admit the evidence which he erroneously rejected. If the master's rul- ing is in favor of the evidence objected to, that evidence will of course be admitted subject to the objection, and that ruling may be reviewed by the court on exceptions to the report of the master, as well as by means of an immediate motion. It 1 Kerosene Lamp Heater Co. v. Fisher, 5 Bann. & Ard. 79, 1880. 508 PROFITS. [CHAP. xxn. may be reviewed on exceptions, because if it is reversed, that reversal will not necessitate any addition to the evidence before the court, but will merely cause the court to eliminate the objectionable evidence from among the factors of the prob- lems before it. If the master is not present when the cause of an objection arises, the practice is for the notary or other magistrate who is taking the deposition, to note the objection thereon, and to take down the evidence objected to ; for he has no authority to make any ruling. In such cases the objections which are noted upon the depositions, may be brought to the attention of the master on the argument before him, and his speciiic ruling thereon may be required, and those rulings may be reviewed by the court, on exceptions to the report of the master, as far as they have affected that report. Most of the points stated in this section are contained in an excellent decision of Judge W. D. SHIPMAN,' and the residue are deducible from that de- cision, or from plain principles of practice. 742. The extent of the defendant's infringement must be determined by the master in order to enable him to ascertain the amount of the profits which the defendant derived from that infringement. Where the infringement was all alike, or where the interlocutory decree specifies the particular doings of the defendant which are to be accounted for as infringe- ments, the only question for the master to decide on .this point is a question of quantity. But where the interlocutory decree merely directs the master to take and report an account of tlie profits which the defendant derived from infringing the com- plainant's patent, and where the complainant claims that cer- tain doings of the defendant which were not proven prior to the interlocutory decree, constitute such an infringement, it becomes the duty of the master to decide the question of in- fringement involved." Nor would it be unprecedented for a court, when directing a master to take and report an account of infringers' profits, to direct him also to decide and report 1 Troy Iron and Nail Factory v. * Knox v. Quicksilver Mining Co. Corning, 6 Blatch. 333, 1869. 6 Sawyer, 436, 1878. CHAP. XXII.] PROFITS. which of various machines used by the defendant were in- fringements of the complainant's patent, and to make up his account accordingly. 1 But the most convenient and least expensive practice is for the court to decide all questions of infringement before entering an interlocutory decree ; because masters are more likely to decide such questions erroneously than judges are ; and because, if a master holds a particular thing to be an infringement which the court holds to be other- wise, the time and expense are lost which were expended in taking an account of profits derived from that particular arti- cle, unless the Supreme Court should agree with the master in opinion and reverse or modify the decree in that behalf. 743. "Where the alleged infringements involved in a suit are of several sorts, the master generally ought to report in a separate item the profits due to each kind ; so that the circuit court on exceptions, or the Supreme Court on an appeal, may render a decree for part or for all of those items, according to its decision upon the questions of infringement involved. This is but a rule of convenience, and may be departed from when convenience would thus be better served. Where the defendant used two different sorts of machines, both of which the complainant claims infringe his patent, if the points upon which those questions of infringement depend are apparently the same in both cases, and if the two sorts of machines were so used by the defendant, that it would be difficult to separate the profits derived from the use of one from those flowing from the use of the other, it will be most convenient not to attempt to do so. In such a case there is but little probability that the courts will hold one of the two sorts of machines to infringe, while holding that the other does not, and there is correspondingly little probability that a necessity will arise for a division of the profits due to the use of the two kinds. 744. A draft report of a master in chancery, is one which the master draws up after the testimony has all been taken, and the parties have been heard in argument on that testi- mony, and the master has formed an opinion on the questions 1 Cawood Patent, 94 U. S. 708, 1876. 510 PROFITS. [CHAP. xxir. involved in the reference before him. Such a report is requi- site to enable the parties to correct any misapprehension into which the master may have fallen, without the alternative necessity of presenting the point to the court. When com- pleted, such a report is either filed in the case, or served on the parties or their solicitors ; and it thereupon devolves upon any party who is dissatisfied with the master's finding to file such exceptions to his draft report, as will call his attention to each alleged error of which the dissatisfied party proposes to complain. 1 It then becomes the duty of the master to con- sider or reconsider the questions involved in those exceptions, and thereupon to prepare and file his final report in the case. The latter will be identical with the draft report if the consid- eration of the exceptions to the earlier document fails to con- vince the master that it was wrong ; but if he is so convinced, he will concert his final report in such a manner* as to make it embody his changed opinion." No new evidence can be in- troduced before a master after he has made his draft report ; * the proceedings upon exceptions thereto, being merely in the nature of a rehearing for errors apparent on the face of the record. According to strict equity practice, it is necessary to give a master this opportunity to correct his findings, in order to save time and labor of the judge. 4 But this strict practice has often been omitted by counsel in patent cases, and its omission been condoned by opposing counsel or by the court.* But it is not safe to omit the filing of such exceptions with the master, for the rule which requires them is always liable to be enforced, and the enforcement consists in the court disre- garding every exception to a master's final report, which was not taken before the master himself, by way of exceptions to his draft report.' 1 Fischer v. Hayes, 16 Fed. Rep. 4 Story v. Livingston, 13 Peters, 469, 1883. 366, 1839. 8 Sugar Refinery Co. v. Mathies- 6 Fischer v. Hayes, 16 Fed. Rep. son, 3 Clif. 149, 1868 ; Troy Iron 469, 1883. and Nail Factory v. Corning, 6 McMickin v. Perm, 18 Howard, Blatch. 332, 1869. 510, 1855 ; Troy Iron and Nail Fac- 3 Piper v. Brown, 1 Holmes, 196, tory v. Corning, 6 Blatch. 333, 1869. 1873. CHAP. XXII.] PROFITS. 511 745. Exceptions to masters' reports ought to be aimed with precision at the errors which such reports are alleged to contain. Such exceptions may be filed by the complainant if he thinks that the master has erred in not finding any profits, or in not finding any damages, or in finding either of those foundations of recovery to have been smaller than the evidence would warrant ; and such exceptions may be filed by the de- fendant, if he thinks that the master erred in finding profits or in finding damages to an amount in excess of what the evi- dence can sustain. 746. Defendants' exceptions to masters' reports are divis- ible into four classes. 1. Exceptions which state that there is evidence in the case, proving that the defendant derived no profit, and that the complainant sustained no damage, on ac- count of the infringement. 2. Exceptions which state that there is evidence in the case 'proving that the master's finding of profits or of damages is too large in amount. 3. Excep- tions which deny that there is any admissible evidence in the case proving that the defendant derived profit, or that the complainant sustained damage, on account of the infringement. 4. Exceptions which deny that there is any admissible evidence in the case proving that the defendant derived profit, or that the complainant sustained damage, on account of the infringe- ment, to so great an amount as the master reported. The first two of these classes of exceptions rely upon affirmations, and the last two rely upon negations, of definite points of fact. For the purposes of the present explanation the four classes may be treated in two groups : those which are affirmative requiring one sort of management in practice, and those which are negative requiring another. 747. Defendants' affirmative exceptions to a draft report, must specify the particular evidence upon which they are re- spectively based. If this rule were otherwise, such an excep tion would not point out error, and would therefore fail to perform its only function. Defendants' affirmative exceptions to a final report must be supported by reference to the particular evidence upon which the exceptor relies ; or by such special statements of the master, as justify the exceptor in affirming 512 PROFITS. [CHAP. xxn. the existence of the particular facts upon which he relies to support such exceptions. Were the court required to wander at large into the evidence which was before the master, the reference to him would be of little value. Indeed that evi- dence need not be reported further than it is relied upon to support, explain, or oppose a particular exception. 1 748. Defendants' negative exceptions are those which call in question the admissibility of the evidence upon which the master based his finding, and those which deny the pres- ence in the record of any evidence sufficient to support that conclusion. An exception of the first of these sorts, so far partakes of the nature of an affirmative exception, that it ought to specify the particular evidence objected to, so that the master, on exceptions to his draft report, or the court, on exceptions to the final report of the master, may have a pre- cise issue in the law of evidence presented for decision. But an exception of the second of these kinds cannot be expected to specify any particular evidence, because it assumes that there is none in the record. In such a case, the proper practice is for the exceptor to require the master to make a special state- ment, in his final report, of the particular evidence which con- vinced his judgment, and to transmit that evidence with his report into court." 749. Complainants' exceptions to a master's report may be of two classes. 1. Exceptions which state that there is evidence in the case proving that the defendant derived larger profits, and that the complainant sustained larger damages than the master reported. 2. Exceptions which state that the master erred in admitting inadmissible evidence. Both of these sorts are affirmative in their nature, and when made to a draft report, must therefore be supported by references to the particular evidence upon which the exceptor relies, or by reference to the particular evidence which he claims was im- properly admitted against his objection, as the case may hap- 1 Harding v. Handy, 11 Wheaton, 307, 1832 ; Greene v. Bishop, 1 Clif. 126, 1826. 195, 1858 ; The Commander-in- s ln re Hemiup, 3 Paige (N. Y.) Chief , 1 Wallace, 00, 1863. CHAP. XXII.] PROFITS. 513 pen to require. When made to a final report, a complainant's exceptions, like the affirmative exceptions of a defendant, must be supported either by references to the particular evi- dence involved, or upon such special statements of the master as will obviate that necessity. 750. The system of practice relevant to a master's find- ing, appears to present the following outlines when reviewed as a whole. It is a master's function to investigate the ques- tions which are referred to him by the court, and to investi- gate no others. To that end, he takes testimony and receives other evidence, and decides what conclusions are justified thereby. Unless the court otherwise directs, the master's draft report should contain those conclusions alone ; and his final report should contain only his final conclusions, together with such statements of fact, and statements and pieces of evidence, as the parties lawfully require him to attach thereto. Where the exceptions to the draft report involve no issues save such as pertain to the admissibility of particular evidence, nothing need accompany the final report except the evidence objected to, and a statement of the ground upon which it was admitted. Where those exceptions merely affirm the pres- ence of evidence requiring a different conclusion from that of the master, nothing need accompany the final report save the particular evidence which those exceptions specify in that behalf. Where those exceptions merely deny the presence of evidence to justify the draft report, nothing need accompany the final report save the evidence which carried the master to the conclusion at which he arrived. Where a master receives no direction from the court, and no request from either of the parties, to report any evidence ; his report contains nothing but his finding, and his finding is conclusive. 1 1 Harding v. Handy, 11 Wheaton, v. Kussell, 36 Maine, 127, 1853 ; 126, 1826 ; In re Hemiup, 3 Paige Sparhawk v. Wills, 5 Gray (Mass.) (N. Y.) 307, 1832 ; Dexter v. Arnold, 431, 1855 ; Greene v. Bishop, 1 Clif. 2 Sumner, 131, 1834 ; Donnell v. 195, 1858 ; Mason v. Kailroad Co. Insurance Co. 2 Snmner, 371, 1836 ; 52 Maine, 115, 1861 ; Piper v. Boston Iron Co. v. King, 2 Gushing Brown, 1 Holmes, 198, 1873 ; The (Mass.) 405, 1848 ; Adams v. Brown, Commander-in-Chief, 1 Wallace, 50, 7 Cushing (Mass.) 222, 1851 ; Howe 18G3. APPENDIX. THE PATENT STATUTES. PATENT ACT OF 1790. 1 STATUTES AT LARGE, 109. An Act to promote the progress of useful Arts. SECTION 1 . Be it enacted by ike Senate and House of Rep- resentatives of the United States of America in Congress assembled, That upon the petition of any person or persons to the Secretary of State, the Secretary for the Department of War, and the Attorney- General of the United States, setting forth that he, she, or they hath or have invented or discovered any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used, and praying that a patent may be granted therefor, it shall and may be lawful to and for the said Secretary of State, the Secretary for the Department of War, and the Attorney- General, or any two of them, if they shall deem the invention or discovery suffi- ciently useful and important, to cause letters -patent to be made out in the name of the United States, to bear teste by the Pres- ident of the United States, reciting the allegations and sug- gestions of the said petition, and describing the said invention or discovery, clearly, truly, and fully, and thereupon granting to such petitioner or petitioners, his, her, or their heirs, ad- ministrators, or assigns, for any term not exceeding fourteen years, the sole and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery ; which letters patent shall be delivered to the Attorney-General of the United States to be examined, 518 THE PATENT STATUTES. who shall, within fifteen days next after the delivery to him, if he shall find the same conformable to this act, certify it to be so at the foot thereof, and present the letters-patent so certified to the President, who shall cause the seal of the United States to be thereto affixed, and the same shall be good and available to the grantee or grantees by force of this act, to all and every intent and purpose herein contained, and shall be re- corded in a book to be kept for that purpose in the office of the Secretary of State, and delivered to the patentee or his agent, and the delivery thereof shall be entered on the record and indorsed on the patent by the said Secretary at the time of granting the same. SECTION 2. And be it further enacted. That the grantee or grantees of each patent shall, at the time of granting the same, deliver to the Secretary of State a specification in writing, containing a description, accompanied with drafts or models, and explanations and models (if the nature of the invention or discovery will admit of a model), of the thing or things by him or them invented or discovered, and described as aforesaid, in the said patents ; which specification shall be so particular, and said models so exact, as not only to distinguish the inven- tion or discovery from other things before known and used, but also to enable a workman or other person skilled in the art of manufacture, whereof it is a branch, or wherewith it may be nearest connected, to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term ; which specifications shall be filed in the office of the said Secretary, and certified copies thereof shall be competent evidence in all courts and before all jurisdictions, where any matter or thing, touching or con- cerning such patent, right, or privilege shall come in question. SECTION 3. And be it further enacted, That upon the ap- plication of any person to the Secretary of State, for a copy of any such specification, and for permission to have similar model or models made, it shall be the duty of the Secretary to give such a copy, and to permit the person so applying for a similar model or models, to take, or make, or cause the same to be taken or made, at the expense of such applicant. THE PATENT STATUTES. 519 SECTION 4. And le 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 improvement 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, administrators, or assigns, first had and ob- tained in writing, every person so offending shall forfeit and pay to the said patentee or patentees, his, her, or their execu- tors, administrators, or assigns, such damages as shall be assessed by a jury, and moreover shall forfeit to the person ag- grieved, the thing or things so devised, made, constructed, 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. 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 pursuance 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 afterwards, 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 process should not issue against him, her, or them, to repeal such patents ; and if sufficient cause shall not be shown to the con- trary, 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, administra- tors, 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 520 THE PATENT STATUTES. 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. SECTION 6. And be it further enacted. That in all actions to be brought by such patentee or patentees, his, her, or their ex- ecutors, administrators, or assigns, for any penalty incurred by virtue of this act, the said patents or specifications shall be prima facie evidence that the said patentee or patentees was or were the first and true inventor or inventors, discoverer or discoverers, of the things so specified, and that the same is truly specified ; but that nevertheless 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 evi- dence tending to prove that the specification filed by the plaintiff does not contain the whole of the truth concerning his invention or discovery ; or that it contains more than is neces- sary 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 to mislead, or shall actually mislead the public, so as the effect described cannot be produced by the means specified, then, and in such cases, the verdict and judg- ment shall be for the defendant. SECTION 7. And be it further enacted, That such patentee as aforesaid shall, before he receives his patent, pay the fol- lowing 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 specifications, 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, in- cluding all intermediate services, twenty cents. APPROVED April 10, 1790. Repealed February 21, 1793. 1 Statutes at Large, Chap. 11, Section 12, p. 323. THE PATENT STATUTES. 521 PATENT ACT OF 1793. 1 STATUTES AT LARGE, 318. An Act to promote the progress of useful Arts ; and to repeal the act heretofore made for that purpose. SECTION 1. Be it enacted l>y the Senate and House of Rep- resentatives of the United States of America in Congress as- sembled, That when any person or persons, being a citizen or citizens of the United States, shall allege that he or they have invented any 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, not known or used before the application, and shall present a peti- tion to the Secretary of State, signifying a desire of obtaining an exclusive property in the same, and praying that a patent may be granted therefor, it shall and may be lawful for the said Secretary of State to cause letters-patent to be made out in the name of the United States, bearing teste by the Presi- dent of the United States, reciting the allegations and sugges- tions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting to such petitioner or petitioners, his, her, or their heirs, administrators,, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said invention or discovery, which letters-patent shall be delivered to the Attorney-General of the United States, to be examined ; who, within fifteen days after such delivery, if he finds the same conformable to this act, shall certify accordingly, at the foot thereof, and return the same to the Secretary of State, who shall present the letters- patent, thus certified, to be signed, and shall cause the seal of the United States to be thereto affixed ; and the same shall be good and available to the grantee or grantees, by force of this act, and shall be recorded in a book, to be kept for that pur- pose, in the office of the Secretary of Statej, and delivered to the patentee or his order. SECTION 2. Provided always, and be it further enacted, That any person who shall have discovered an improvement in the 522 THE PATENT STATUTES. principle of any machine, or in the process of any composition of matter, which' shall have been patented, and shall have ob- tained a patent for such improvement, he shall not be at liberty to make, use, or vend the original discovery, nor shall the first inventor be at liberty to use the improvement : And it is here- by enacted and declared, that simply changing the form or the proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery. 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 that he is the true inventor or discoverer of the art, machine, or improvement for which he solicits a patent, which oath or affirmation may be made before any per- son authorized to administer oaths, and 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 ex- act terms, as to distinguish the same from all other things before known, and to enable 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 application of that principle or character, by which it may be distinguished from other inventions ; and he shall accompany the whole with drawings and written references, where the nature of the case admits of drawings, or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the pur- pose of experiment, where the invention is of a composition of matter ; which description, signed by himself, and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence in all courts, where any matter or thing, touching such patent right shall come 'in question. And such inventor shall, more- over, deliver aunodel of his machine, provided the Secretary shall deem such model to be necessary. SECTION 4. And "be it further enacted, That it shall be law- ful for any inventor, his executor or administrator, to assign the title and interest in the .-said invention, at any time, and THE PATENT STATUTES. 523 the assignee, having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility, and so the assignees of assigns, to any degree. SECTION 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 writ- ing, every person so offending shall forfeit and pay to the pat- entee 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 compe- tent jurisdiction. SECTION 6. Provided always, and be it further enacted, 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 described effect, which concealment or addition shall fully appear to have been made for the purpose of deceiving the public, or that the thing thus secured by patent was not originally discovered by the patentee, but had been in use, or had been described in some public work anterior to the supposed discovery of the patentee, or that he had surreptitiously obtained a patent for the discov- ery of another person ; in either of which cases judgment shall be rendered for the defendant, with costs, and the patent shall be declared void. SECTION 7. And le it further enacted, That where any State, before its adoption of the present form of government, shall have granted an exclusive right to any invention, the party claiming that right shall not be capable of obtaining an exclusive right under this act, but on relinquishing his right 524: THE PATENT STATUTES. under such particular State, and of such relinquishment, his obtaining an exclusive right under this act shall be sufficient evidence. SECTION 8. And be it further enacted. That the persons whose applications for patents were, at the time of passing this act, depending before the Secretary of State, Secretary at War, and Attorney-General, according to the act passed the second session of the first Congress, entituled " An act to promote the progress of useful arts," on complying with the conditions of this act, and paying the fees herein required, may pursue their respective claims to a patent under the same. SECTION 9. And be it further enacted, That in case of inter- fering applications, the same shall be submitted to the arbitra- tion of three persons, one of whom shall be chosen by each of the applicants, and the third person shall be appointed by the Secretary of State ; and the decision or award of such arbitra- tors, delivered to the Secretary of State in writing, and sub- scribed by them, or any two of them, shall be final, as far as respects the granting of the patent. And if either of the ap- plicants shall refuse or fail to chuse an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties apply- ing shall not all unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three ar- bitrators for the purpose. SECTION 10. And be it further enacted, That upon oath or affirmation being made before the judge of the district court where the patentee, his executors, 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, within three years after is- suing the said patent, but not afterward, it shall and may be lawful for the judge of the said district court, if the mat- ter alleged shall appear to him to be sufficient, to grant a rule, that the patentee, or his executor, administrator, or assign show cause why process should not issue against him to repeal such patent. And if sufficient cause shall not be shown to the con- THE PATENT STATUTES. 525 trary, the rule shall be made absolute, and thereupon the said judge shall order process to be issued against such patentee, or his executors, administrators, 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 rendered by such court for the repeal of such patent ; 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 de- fending the suit, to be taxed by the court, and recovered in due course of law. SECTION 11. And be it further enacted. That every inventor, before he presents his petition to the Secretary of State, signi- fying his desire of obtaining a patent, shall pay into the treas- ury thirty dollars, for which he shall take duplicate receipts ; one of which receipts he shall deliver to the Secretary of State, when he presents his petition ; and the money thus paid shall be in full for the sundry services to be performed in the office of the Secretary of State, consequent on such petition, and shall pass to the account of clerk-hire in that office : Provided nevertheless, That for every copy, which may be required at the said office, of any paper respecting any patent that has been granted, the person obtaining such copy shall pay, at the rate of twenty cents, for every copy-sheet of one hundred words, and for every copy of a drawing, the party obtaining the same, shall pay two dollars, of which payments an account shall be rendered, annually, to the treasury of the United States, and they shall also pass to the account of clerk-hire in the office of the Secretary of State. SECTION 12. And be it further enacted, That the act passed the tenth day of April, in the year one thousand seven hun- dred and ninety, intituled " An act to promote the progress of useful arts,' ' be, and the same is hereby, repealed : Provided always, That nothing contained in this act shall be construed to invalidate any patent that may have been granted under the authority of the said act ; and all patentees under the said act, their executors, administrators, and assigns, shall be considered 526 THE PATENT STATUTES. within the purview of this act, in respect to the violation of their rights : provided such violations shall be committed after the passing of this act. APPROVED February 21, 1793. Eepealed July 4, 1836. 5 Statutes at Large, Chap. 357, Section 21, p. 125. PATENT ACT OF 1794. 1 STATUTES AT LARGE, 393. An Act supplementary to the act intituled " An act to pro- mote the progress of Useful Arts." Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That all suits, actions, process and proceedings, heretofore had in any District Court of the United States, under an act passed the tenth day of April, in the year one thousand seven hun- dred and ninety, intituled "An act to promote the progress of useful arts," which may have been set aside, suspended or abated, by reason of the repeal of the said act, may be restored, at the instance of the plaintiff or defendant, within one year from and after the passing of this act, in the said court, to the same situation, in which they may have been when they were so set aside, suspended, or abated ; and that the parties to the said suits, actions, process or proceedings be, and are hereby, entitled to proceed in such cases, as if no such repeal of the act afore- said had taken place : Provided always, That before any order or proceeding, other than that for continuing the same suits, after the reinstating thereof, shall be entered or had, the defendant or plaintiff, as the case may be, against whom the same may have been reinstated, shall be brought into court by summons, attachment, or such other proceeding as is used in other cases for compelling the appearance of a party. APPROVED June 7, 1794. Kepealed July 4, 1836. 5 Statutes at Large, Chap. 357, Sec- tion 21, p. 125. THE PATENT STATUTES. 527 PATENT ACT OF 1800. 2 STATUTES AT LAKGE, 37. An Act to extend the privilege of obtaining patents for useful discoveries and inventions, to certain persons therein men- tioned, and to enlarge and define the penalties for vio- lating the rights of patentees. SECTION 1. Be it enacted ly the Senate and House of Repre- sentatives of the United States of America in Congress assem- bled, That all and singular the rights and privileges given, in- tended or provided to citizens of the United States, respecting 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 time of petitioning in the manner prescribed by the said act, shall have resided for two years within the United States, which privileges shall be obtained, used, and enjoyed by such persons, in as full and ample manner, and under the same conditions, limitations, and restrictions, as by the said act is provided and directed in the case of citizens of the United States : Provided always, That every person petition- ing for a patent for any invention, art, or discovery, pursuant to this act, shall make oath or affirmation before some person duly authorized to administer oaths before such patent shall be granted, that such invention, art, or discovery hath 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 afterwards appear had been known or used previous to such application for a patent, shall be utterly void. SECTION 2. And he it further enacted, That where any per- son hath made, or shall have made, any new invention, discovery, or improvement, on account of which a patent might, by virtue of this or 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 528 THE PATENT STATUTES. patent, shall devolve on the legal representatives of such per- son 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, limitations, and restrictions as the same was held, or might have been claimed or enjoyed by such person, in his or her lifetime ; and when application for a patent shall be made by such legal representatives, the oath or affirmation, provided in the third section of the before-mentioned act, shall be so varied as to be applicable to them. SECTION 3. And le it further 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 exclusive right is secured 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 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 jurisdic- tion thereon. SECTION 4. And be it further enacted, That the fifth section of the above-mentioned 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 is, repealed. APPROVED April 17, 1800. Eepealed July 4, 1836. 5 Statutes at Large, Chap. 357, Section 21, p. 125. PATENT ACT OF 1819. 3 STATUTES AT LARGE, 481. An Act to extend the jurisdiction of the circuit courts of the United States to cases arising under the law relating to patents. THE PATENT STATUTES. 529 Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That the circuit courts of the United States shall have original cognizance, as well in equity as at law, of all actions, suits, controversies, and cases arising under any law of the United States, granting or confirming to authors or inventors the ex- clusive right to their respective writings, inventions, and dis- coveries ; and upon any bill in equity, filed by any party aggrieved in any such cases, shall have authority to grant in- junctions, according to the course and principles of courts of equity, to prevent 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 : Provided however. That from all judgments and decrees of any circuit courts 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 the same circumstances, as is now provided by law in other judgments and decrees of such circuit courts. APPROVED February 15, 1819. Repealed July 4, 1836. 5 Statutes at Large, Chap. 357, Section 21, p. 125. PATENT ACT OF JULY 3, 1832. 4 STATUTES AT LARGE, 559. An Act concerning patents for useful inventions. SECTION 1. JBe it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress assem^ bled, That it shall be the duty of the Secretary of State,, annually, in the month of January, to report to Congress, and' to publish in two of the newspapers printed in the city of" Washington, a list of all the patents for discoveries, inventions,, and improvements, which shall have expired within the year immediately preceding, with the names of the patentees, alpha- betically arranged. SECTION 2. And be it further enacted, That application to Congress to prolong or renew the term of a patent shall be made 530 THE PATENT STATUTES. before its expiration, and shall be notified at least once a month, for three months before its presentation, in two newspapers printed in the city of Washington, and in one of the news- papers in which the laws of the United States shall be published in the State or Territory in which the patentee shall reside. The petition shall set forth particularly the grounds of the ap- plication. It shall be verified 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 expenditures of the patentee, so as to exhibit the profit or loss arising therefrom. SECTION 3. And be it further enacted, That wherever any patent which has been heretofore, or shall be hereafter, granted to any inventor in pursuance of the act of Congress, entitled " An act to promote the progress of useful arts, and to repeal the act heretofore made for that purpose," passed on the twenty-first day of February, in the year of our Lord, one thousand seven hundred and ninety-three, or of any of the acts supplementary thereto, shall be invalid or inoperative, by reason that any of the terms or conditions prescribed in the third section of the said first-mentioned act, have not, by inadvertence, acci- dent, or mistake, and without any fraudulent or deceptive inten- tion, been complied with on the part of the said inventor, it shall be lawful for the Secretary of State, upon the surrender to him of such patent, to cause a new patent to be granted to the said inventor for the same invention for the residue of the period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said third section of the said act. And, in case of his death, or any assignment by him made of the same patent, the like right shall vest in his executors and administrators, or assignee or assignees : Provided however, That such new patent so granted shall, in all respects, be liable to the same matters of objection and defence as any original patent granted under the said first-mentioned act. But no public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special license of the inventor, THE PATENT STATUTES. 531 or without the consent of the patentee that there shall be a free public use thereof, shall, in any manner, prejudice his right of recovery for any use or violation of his invention after the grant of such new patent as aforesaid. APPROVED July 3, 1832. Repealed July 4, 1836. 5 Statutes at Large, Chap. 357, Section 21, p. 125. PATENT ACT OF JULY 13, 1832. 4 STATUTES AT LARGE, 577. An Act concerning the issuing of patents to aliens, for useful discoveries and inventions. Be it enacted 7>y the Senate and House of Representatives of the United States of America, in Congress assembled, That the privileges granted to the aliens described in the first section of the act, to extend the privilege of obtaining patents for useful discoveries and inventions to certain persons therein mentioned, and to enlarge and define the penalties for violating the rights of patentees, approved April seventeenth, eighteen hundred, be extended in like manner to every alien who, at the time of petitioning for a patent, shall be resident in the United States, and shall have declared his intention, according to law, to be- come 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 without 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 issuing 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 introduction 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 en- titled to become a citizen of the United States. APPROVED July 13, 1832. 532 THE PATENT STATUTES. Repealed July 4, 1836. 5 Statutes at Large, Chap. 357, Section 21, p. 125. PATENT ACT OF 1836. 5 STATUTES AT LARGE, 117. An Act to promote the progress of the useful arts, and to repeal all acts and parts of acts heretofore made for that purpose. SECTION 1. Be it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress assem- bled, That there shall be established and attached to the De- partment 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 consent of the Senate, whose duty it shall be, under the direction of the Secretary of State, to superintend, execute, and perform all such acts and things touching and respecting the granting and issuing of patents for new and useful dis- coveries, inventions, and improvements, as are herein provided for, or shall hereafter be, by law, directed to be done and per- formed, and shall have the charge and custody of all the books, records, papers, models, machines, and all other things belong- ing to said office. And said Commissioner shall receive the same compensation as is allowed by law to the Commissioner of the Indian Department, and shall be entitled to send and receive letters and packages by mail, relating to the business of the office, free of postage. SECTION 2. And be it further enacted, That there shall be in said office an inferior officer, to be appointed by the said princi- pal officer, with the approval of the Secretary of State, to re- ceive an annual salary of seventeen hundred dollars, and to be called the Chief Clerk of the Patent Office ; who in all cases during the necessary absence of the Commissioner, or when then said principal office shall become vacant, shall have the charge and custody of the seal, and of the records, books, papers, machines, models, and all other things belonging to the said office, and shall perform the duties of Commissioner THE PATENT STATUTES. 533 during such vacancy. And the said Commissioner may also, with like approval, appoint an examining clerk, at an annual salary of fifteen hundred dollars ; two other clerks at twelve hundred dollars each, one of whom shall be a competent draughtsman ; one other clerk at one thousand dollars ; a machinist at twelve hundred and fifty dollars ; and a messen- ger at seven hundred dollars. And said Commissioner, clerks, and every other person appointed and employed in said office, shall be disqualified and interdicted from acquiring or taking, except by inheritance, 'during the period for which they shall hold their appointments, respectively, any right or interest, directly or indirectly, in any patent for an invention or discovery which has been, or may hereafter be granted. SECTION 3. And be it further enacted, That the said principal officer, and every other person to be appointed in the said office, shall, before he enters upon the duties of his office or appointment, make oath or affirmation truly and faithfully to execute the trust committed to him. And the said Commis- sioner and the chief clerk shall also, before entering upon their duties, severally give bonds, with sureties, to the Treasurer of the United States, the former in the sum of ten thousand dollars, and the latter in the sum of five thousand dollars, with condition to render a true and faithful account to him or his successor in office, quarterly, of all moneys which shall be by them respectively received for duties on patents, and for copies of records and drawings, and all other moneys received by virtue of said office. SECTION 4. And be it further enacted, That the said Commis- sioner shall cause a seal to be made and provided for the said office, with such device as the President of the United States shall approve ; and copies of any records, books, papers, or drawings belonging to the said office, 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 papers deposited in said office, on 534 THE PATENT STATUTES. paying for the written copies the sum of ten cents for every page of one hundred words ; and for copies of drawings the reasonable expense of making the same. SECTION 5. And be it further enacted. That all patents issned 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 Commissioner of the said office, and shall be recorded, together with the descriptions, specifications, and drawings, in the said office, in books to be kept for that purpose. Every such patent shall contain a short description or title of the invention or discovery, correctly in- dicating its nature and design, and in its terms grant to the applicant or applicants, his or their heirs, administrators, ex- ecutors, or assigns, for a term not exceeding fourteen years, the full and exclusive right and liberty of making, using, and vending to others to be used, the said invention or discovery, referring to the specifications for the particulars thereof , a copy of which shall be annexed to the patent, specifying what the patentee claims as his invention or discovery. SECTION 6. And be ibfurther enacted, That any person or persons, having discovered or invented any 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, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent or allowance, as the inventor or discoverer ; and shall desire to obtain an exclusive property therein, may make appli- cation, in writing, to the Commissioner of Patents, expressing such desire, and the Commissioner, on .due proceedings had, may grant a patent therefor. But before any inventor shall receive a patent for any such new invention or discovery, he 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 PATENT STATUTES. 535 the same ; and in case of any machine, he shall fully explain the principle, and the several modes in which he has contem- plated the application of that principle or character by which it may be distinguished from other inventions ; and shall par- ticularly specify and point out the part, improvement, or com- bination, which he claims as his own invention or discovery. He shall, furthermore, accompany the whole with a drawing or drawings, and written references, where the nature of the case admits of drawings, or with specimens of ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention or discovery is of a composition of matter ; which descriptions and drawings, signed by the inventor and attested by two witnesses, shall be filed in the Patent Office ; and he shall moreover furnish a model of his invention, in all cases which admit of a represen- tation by model, of a convenient size to exhibit advantageously its several parts. The applicant shall also make oath or affir- mation that he does verily believe that he is the original and first inventor or discoverer of the art, machine, 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 citizen ; which oath or affirmation may be made before any person authorized by law to administer oaths. SECTION 7. And "be it further enacted, That on the filing of any such application, description, and specification, and the payment of the duty hereinafter provided, the Commissioner shall make, or cause to be made, an examination of the alleged new invention or discovery ; and if, on any such examination, it shall not appear to the Commissioner that the same had been invented or discovered by any other person in this country prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publi- cation in this or any foreign country, or had been in public use or on sale with the applicant's consent or allowance prior to the application, if the Commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor. But whenever, on such examination, it shall appear 536 THE PATENT STATUTES. to the Commissioner that the applicant was not the original and first inventor, or discoverer thereof, or that any part of that which is claimed as new had before been invented or discov- ered, or patented, or described in any printed publication in this or any foreign country, as aforesaid, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him, briefly, such information and references as may be useful in judging of the propriety of renewing his appli- cation, or of altering his specification, to embrace only that part of the invention or discovery which is new. In every such case, if the applicant shall elect to withdraw his applica- tion, relinquishing his daim to the model, he shall be entitled to receive back twenty dollars, part of the duty required by this act, on filing a notice in writing of such election in the Patent Office, a copy of which, certified by the Commissioner, shall be a sufficient warrant to the treasurer for paying back to the said applicant the said sum of twenty dollars. But if the applicant in such case shall persist in his claims for a patent, with or without any alteration in his specification, he shall be re- quired to make oath or affirmation anew, in manner as afore- said. And if the specification and claim shall not have been so modified as, in the opinion of the Commissioner, shall entitle the applicant to a patent, he may, on appeal, and upon request in writing, have the decision of a board of examiners, to be composed of three disinterested persons, who shall be appoint- ed for that purpose by the Secretary of State, one of whom at least, to be selected, if practicable and convenient, for his knowledge and skill in the particular art, manufacture, or branch of science to which the alleged invention appertains ; who shall be under oath or affirmation for the faithful and im- partial performance of the duty imposed upon them by said appointment. Said board shall be furnished with a certificate in writing of the opinion and decision of the Commissioner, stating the particular grounds of his objection, and the part or parts of the invention which he considers as not entitled to be patented. And the said board shall give reasonable notice to the applicant, as well as to the Commissioner, of the time and place of their meeting, that they may have an opportunity of furnishing them THE PATENT STATUTES. 537 with such facts and evidence as they may deem necessary to a just decision ; and it shall be the duty of the Commissioner to furnish to the board of examiners such information as he may possess relative to the matter under their consideration. And on an examination and consideration of the matter by such board, it shall be in their power, or of a majority of them, to reverse the decision of the Commissioner, either in whole or in part, and their opinion being certified to the Commissioner, he shall be governed thereby in the further proceedings to be had on such application : Provided however, That before a board shall be instituted in any such case, the applicant shall pay to the credit of the treasury, as provided in the ninth section of this act, the sum of twenty- five dollars, and each of said per- sons so appointed shall be entitled to receive for his services in each case a sum not exceeding ten dollars, to be determined and paid by the Commissioner out of any moneys in his hands, which shall be in full compensation to the persons who rnay be so appointed, for their examination and certificate as aforesaid. SECTION 8. And be it further enacted, That whenever an application shall be made for a patent which, in the opinion of the Commissioner, would interfere with any other patent for which an application may be pending, or with any unexpired patent which shall have been granted, it shall be the duty of the Com- missioner to give notice thereof to such applicants, or patentees, as the case may be ; and if either shall be dissatisfied with the decision of the Commissioner on the question of priority of right or invention, on a hearing thereof, he may appeal from such decision, on the like terms and conditions as are provided in the preceding section of this act ; and the like proceedings shall be had, to determine which or whether either of the appli- cants is entitled to receive a patent as prayed for. J3ut noth- ing in this act contained shall be construed to deprive an orig- inal and true inventor of the right to a patent 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 preceding the filing of his specification and drawings. And whenever the appli- cant shall request it, the patent shall take date from the time 538 THE PATENT STATUTES. of the filing of the specification and drawings, not however exceeding six months prior to the actual issuing of the patent ; and on like request, and the payment of the duty herein required, by any applicant, his specification and drawings shall be filed in the secret archives of the office until he shall fur- nish the model and the patent to be issued, not exceeding the term of one year, the applicant being entitled to notice of interfering applications. SECTION 9. And be it further 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 deposit 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 per- sons the sum of three hundred dollars ; for which payment duplicate receipts shall be taken, one of which to be filed in the office of the Treasurer. And the moneys received into the treasury under this act shall constitute a fund for the payment of the salaries of the officers and clerks herein provided for, and all other expenses of the Patent Office, and to be called the patent fund. SECTION 10. And ~be it further enacted, That where any person hath made, or shall have made, any new invention, dis- covery, or improvement, on account of which a patent might by virtue of this act be granted, and such person shall die be- fore 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, in as full and ample manner, and under the same conditions, limitations, and restrictions as the same was held, or might have been claimed or enjoyed by such person in his or her lifetime ; and when application for a patent shall be made by such legal representatives, the oath THE PATENT STATUTES. 539 or affirmation provided in the sixth section of this act shall be so varied as to be applicable to them. SECTION 11. And be it further enacted, That every patent shall be assignable in law, either as to the whole interest, or any undivided part thereof, by any instrument in writing ; which assignment, and also every grant and conveyance of the exclusive right, under any patent, to make and use, and to grant to others to make and use the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office within three months from the execution thereof, for which the assignee or grantee shall pay to the Commissioner the sum of three dollars. 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 pur- pose thereof, and its principal and distinguishing characteris- tics, and praying protection of his right till he shall have matured his invention ; which sum of twenty dollars, in case the person filing such caveat shall afterwards take out a patent for the invention therein mentioned, shall be considered a 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 inter- fere, it shall be the duty of the Commissioner to deposit the description, specifications, drawings, and model, in the confi- dential 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 caveat, file his description, specifications, drawings, and model ; and if, in the opinion of 540 THE PATENT STATUTES. the Commissioner, the specifications of claim interfere with each other, like proceedings may be had in all respects as are in this act provided in the case of interfering applications : Provided however, That no opinion or decision of any board of examiners, under the provisions of this act, shall precludo any person, interested in favor of or against the validity of any patent which has been or may hereafter be granted, from the right to contest the same in any judicial court in any action in which its validity may come in question. SECTION 13. And be it further enacted, That whenever any patent which has heretofore been granted, or which shall here- after be granted, shall be inoperative, or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification as his own invention more than he had or shall have a right to claim as new ; if the error has or shall have arisen by inadvertency, ac- cident, or mistake, and without any fraudulent or deceptive in- tention, it shall be lawful for the Commissioner, upon the sur- render to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued to the said inventor, for the same invention, for the residue of the period then unexpired for which the original patent was grant- ed, in accordance with the patentee's corrected description and specification. And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees. And the patent, so reissued, together with the corrected description and specifica- tion, shall have the same effect and operation in law, on the trial of all actions hereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form, before the issuing out of the original patent. And whenever the original patentee shall be desirous of adding the description and specification of any new improvement of the original invention or discovery which shall have been in- vented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars as hereinbefore provided, have the same annexed to the THE PATENT STATUTES. 541 original description and specification ; and the Commissioner shall certify, on the margin of such annexed description and specification, the time of its being annexed and recorded ; and the same shall thereafter have the same effect in law, to all in- tents and purposes, as though it had been embraced in the original description and specification. SECTION 14. And be it further enacted. That whenever, in any action for damages for making, using, or selling the thing whereof the exclusive right is secured by any patent heretofore granted, or by any patent 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 damages 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 interested, whether as patentees, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States. SECTION 15. And be -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 plain- tiff or his attorney, thirty days before trial, tending to prove that the description and specification filed by the plaintiff does not contain the whole truth relative to his invention or dis- covery, or that it contains more than is necessary to produce the described effect ; which concealment or addition shall fully appear to have been made for the purpose of deceiving the public, 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 witli the consent and allowance of the patentee before his application for a patent, or that he had surreptitiously or 542 THE PATENT STATUTES. unjustly obtained the patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same ; or 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 rea- sonable terms, the 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 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 : Provided however, That whenever it shall satisfactorily appear that the patentee, at the time of making his application for the patent, believed himself to be the first inventor or discov- erer of the thing patented, the same shall not be held to be void on account of the invention or discovery or any part thereof having been before known or used in any foreign coun- try, it not appearing that the same or any substantial part thereof had before 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 specifi- cation of claim is embraced 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. SECTION 16. And ~be it further enacted, That whenever there shall be two interfering patents, or whenever a patent on application shall have been refused on an adverse decision of a board of examiners, on the ground that the patent applied for would interfere with an unexpired patent previously granted, any person interested in any such patent, either by assignment or otherwise, in the one case, and any such appli- cant in the other case, may have remedy by bill in equity ; THE PATENT STATUTES. 543 and the court having cognizance thereof, on notice to adverse parties, and other due proceedings had, may adjudge and de- clare either the patents void in the whole or in part, or inoper- ative or invalid in any particular part or portion of the United States, according to the interest which the parties to such suit may possess in the patent or the inventions patented, and may also adjudge that such applicant is entitled, according to the principles and provisions of this act, to have and receive a patent for his invention, as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall in any such case be made to appear. And such adjudication, if it be in favor of the right of such applicant, shall authorize the Commissioner to issue such patent, on his filing a copy of the adjudication, and otherwise complying with the requisi- tions of this act. Provided however ', That no such judgment or adjudication shall affect the rights of any person except the parties to the action and those deriving title from or under them subsequent to the rendition of such judgment. 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 exclu- sive right to their inventions or discoveries, 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 power and jurisdiction of a circuit court ; which courts shall have power, upon a bill in equity filed by any party aggrieved, 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 : Provided however, That 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 the 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. 544: THE PATENT STATUTES. SECTION 18. And be it further enacted, That whenever any patentee of an invention or discovery shall desire an ex- tension of his patent beyond the term of its limitation, he may make application therefor, in writing, to the Commissioner of the Patent Office, setting forth the grounds thereof ; and the Commissioner shall, on the applicant's paying the sum of forty dollars 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 patent, 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 Treasury 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 invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit in any manner accruing to him from and by reason of said invention. 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 interest 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 certificate thereon of such extension, for the term of seven years from and after the expiration of the first term ; which certificate, with a certificate of said board of their judgment THE PATENT STATUTES. 545 and opinion as aforesaid, shall be entered on record in the Patent Office ; and thereupon the said patent shall have the same effect 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 extent of their respective interests therein : Provided however. That no extension of a patent shall be granted after the expiration of the term for which it was originally issued. SECTION 19. And fie it further enacted, That there shall be provided for the use of said office, a library of scientific works and periodical publications, both foreign and American, calcu- lated to facilitate the discharge of the duties hereby required of the chief officers therein, to be purchased under the direc- tion of the Committee of the Library of Congress. And the sum of fifteen hundred dollars is hereby appropriated for that purpose, to be paid out of the patent fund. SECTION 20. And be it further enacted, That it shall be the duty of the Commissioner to cause to be classified and arranged, in such rooms or galleries as may be provided for that purpose, in suitable cases, when necessary for their preservation, and in such manner as shall be conducive to a beneficial and favorable display thereof, the models and specimens of compositions and of fabrics and other manufactures and works of art, patented or unpatented, which have been, or shall hereafter be, depos- ited in said office. And said rooms or galleries shall be kept open during suitable hours for public inspection. SECTION 21. And be it further enacted, That all acts and parts of acts heretofore passed on this subject be, and the same are hereby repealed : Provided however, That all actions and processes in law or equity sued out prior to the passage of this act may be prosecuted to final judgment and execution, in the same manner as though this act had not been passed, excepting and saving the application to any such action of'thu provisions of the fourteenth and fifteenth sections of this act, so far as they may be applicable thereto ; And provided also, That all applications or petitions for patents, pending at the time of the 546 THE PATENT STATUTES. passage of this act, in cases where the duty has been paid, shall be proceeded with and acted on in the same manner as though filed after the passage hereof. APPROVED July 4, 1836. Eepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1837. 5 STATUTES AT LARGE, 191. An Act in addition to the act to promote the progress of science and useful arts. SECTION 1. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That any person who may be in possession of, or in any way interested in, any patent for an invention, discovery, or improvement, issued prior to the fifteenth day of December, in the year of our Lord one thousand eight hundred and thirty- six, or in an assignment of any patent, or interest therein, ex- ecuted and recorded prior to the said fifteenth day of De- cember, may, without charge, on presentation or transmission thereof to the Commissioner of Patents, have the same record- ed anew in the Patent Office, together with the descriptions, specifications of claim and drawings annexed or belonging to the same ; and it shall be the duty of the Commissioner to cause the same, or any authenticated copy of the original record, specification, or drawing which he may obtain* to be transcribed and copied into books of record to be kept for that purpose ; and wherever a drawing was not originally annexed to the patent and referred to in the specification, any drawing pro- duced as a delineation of the invention, being verified by oath in such manner as the Commissioner shall require, may be trans- mitted and placed on file, or copied as aforesaid, together with certificate of the oath ; or such drawings may be made in the office, under the direction of the Commissioner, in conformity with the specification. And it shall be the duty of the Com- missioner to take such measures as may be advised and de- termined by the Board of Commissioners provided for in the THE PATENT STATUTES. 54:7 fourth section of this act, to obtain the patents, specifications, and copies aforesaid, for the purpose of being so transcribed and recorded. And it shall be the duty of each of the several clerks of the judicial courts of the United States, to transmit as soon as may be, to the Commissioner of the Patent Office, a statement of all the authenticated copies of patents, descriptions, specifications, and drawings of inventions and discoveries made and executed prior to the aforesaid fifteenth day of December, which may be found on the files of his office ; and also to make out and transmit to said Commissioner, for record as aforesaid, a certified copy of every such patent, description, specification, or drawing, which shall be specially required by said Com- missioner. SECTION 2. And be it further enacted, That copies of such record and drawings, certified by the Commissioner, or, in his absence, by the chief clerk, shall be primd facie evidence of the particulars of the invention and of the patent granted therefor in any judicial court of the United States, in all cases where copies of the original record or specification and draw- ings would be evidence, without proof of the loss of such orig- inals ; and no patent issued prior to the aforesaid fifteenth day of December shall, after the first day of June next, be received in evidence in any of the said courts in behalf of the patentee or other person who shall be in possession of the same, unless it shall have been so recorded anew, and a drawing of the in- vention, if separate from the patent, verified as aforesaid, de- posited in the Patent Office ; nor shall any written assignment of any such patent, executed and recorded prior to the said fifteenth day of December, be received in evidence in any of the said courts in behalf of the assignee or other person in pos- session thereof, until it shall have been so recorded anew. SECTION 3. And be it further enacted, That whenever it shall appear to the Commissioner that any patent was destroyed by the burning of the Patent Office building on the aforesaid fifteenth day of December, or was otherwise lost prior thereto, it shall be his duty, on application therefor by the patentee or other person interested therein, to issue a new patent for the same invention or discovery, bearing the date of the original 548 THE PATENT STATUTES. patent, with his certificate thereon that it was made and issued pursuant to the provisions of the third section of this act, and shall enter the same of record : Provided however, That be- fore such patent shall be issued the applicant therefor shall de- posit in the Patent Office a duplicate, as near as may be, of the original model, drawings, and description, with specification of the invention or discovery, verified by oath, as shall be re- quired by the Commissioner ; and such patent, and copies of such drawings and descriptions, duly certified, shall be ad- missible as evidence in any judicial court of the United States, and shall protect the rights of the patentee, his administrators, heirs, and assigns, to the extent only in which they would have been protected by the original patent and specifica- tion. SECTION 4. And be it further enacted, That it shall be the duty of the Commissioner to procure a duplicate of such of the models, destroyed by fire on the aforesaid fifteenth day of December, as were most valuable and interesting, and whose preservation would be important to the public ; and such as would be necessary to facilitate the just discharge of the duties imposed by law on the Commissioner in issuing patents, and to protect the rights of the public and of patentees in patented inventions and improvements : Provided, That a duplicate of such models may be obtained at a reasonable expense : And provided also, That the whole amount of expenditure for this purpose shall not exceed the sum of one hundred thousand dollars. And there shall be a temporary board of Commis- sioners, to be composed of the Commissioner of the Patent Office and two other persons to be appointed by the President, whose duty it shall be to consider and determine upon the best and most judicious mode of obtaining models of suitable con- struction ; and also to consider and determine what models may be procured in pursuance of, and in accordance with, the pro- visions and limitations in this section contained. And said commissioners may make and establish all such regulations, terms, and conditions, not inconsistent with law, as in their opinion may be proper and necessary to carry the provisions of this section into effect, according to its true intent. THE PATENT STATUTES. 549 SECTION 5. And be it further enacted, That, whenever a patent shall be returned for correction and reissue under the thirteenth section of the act to which this is additional, and the patentee shall desire several patents to be issued for distinct and separate parts of the thing patented, he shall first pay, in manner and in addition to the sum provided by that act, the sum of thirty dollars for each additional patent so to be issued : Provided however, That no patent made prior to the aforesaid fifteenth day of December shall be corrected and reissued until a duplicate of the model and drawing of the thing as originally invented, verified by oath as shall be required by the Commis- sioner, shall be deposited in the Patent Office : Nor shall any addition of an improvement be made to any patent heretofore granted, nor any new patent be issued for an improvement made in any machine, manufacture, or process, to the original inventor, assignee, or possessor of a patent therefor, nor any disclaimer be admitted to record, until a duplicate model and drawing of the thing originally intended, verified as aforesaid, shall have been deposited in the Patent Office, if the Commissioner shall require the same ; nor shall any patent be granted for an invention, improvement, or dis- covery, the model or drawing of which shall have been lost, until another model and drawing, if required by the Commis- sioner, shall, in like manner, be deposited in the Patent Office. And in all such cases, as well as in those which may arise under the third section of this act, the question of compensa- tion for such models and drawings shall be subject to the judg- ment and decision of the Commissioners, provided for in the fourth section, under the same limitations and restrictions as are therein prescribed. SECTION 6. And be it further enacted, That any patent hereafter to be issued may be made and issued to the assignee or assignees of the inventor or discoverer, the assignment thereof being first entered of record, and the application therefor being duly made, and the specification duly sworn to by the inventor. And in all cases hereafter, the applicant for a patent shall be held to furnish duplicate drawings, when- 550 THE PATENT STATUTES. ever the case admits of drawings, one of which to be deposited in the office, and the other to be annexed to the patent, and considered a part of the specification. SECTION T. And be it further enacted, That, whenever any patentee shall have, through inadvertence, accident, or mis- take, made his specification of claim too broad, claiming more than that of which he was the original or first inventor, some material or substantial part of the thing patented being truly and justly his own, any such patentee, his administrators, ex- ecutors, and assigns, whether of the whole or of a sectional interest therein, may make disclaimer of suet parts of the thing patented as the disclaimant 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 witnesses, and recorded in the Patent Office, 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 disclaimer shall thereafter be taken and considered as part of the original specification, to the extent of the interest which shall be possessed in the patent or right secured thereby, by the disclaimant, 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 relate to the question of unreasonable neglect or delay in filing the same. SECTION 8. And be it further enacted, That, whenever application shall be made to the Commissioner for any addition of a newly discovered improvement to be made to an existing patent, or whenever a patent shall be returned for correction and reissue, the specification of claim annexed to every such patent shall be subject to revision and restriction, in the same manner as are original applications for patents ; the Commis- sioner shall not add any such improvement to the patent in the one case, nor grant the reissue in the other case, until the applicant shall have entered a disclaimer, or altered his speci- fication of claim in accordance with the decision of the Commis- sioner ; and in all such cases, the applicant, if dissatisfied with such decision, shall have the same remedy, and be entitled to THE PATENT STATUTES. 551 the benefit of the same privileges and proceedings as are pro- vided by law in the case of original applications for patents. SECTION 9. And be it further enacted, any thing in the fifteenth section of the act to which this is additional to the contrary notwithstanding, That, whenever by mistake, acci- dent, or inadvertence, 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 discoverer of any material or substantial part of the thing patented, of which he was not the 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 discovery as shall be truly and bond fide his own ; Provided, It shall be a material and substantial part of the thing patented, and be definitely distinguishable from the other parts so claimed without right as aforesaid. And every such patentee, his executors, administrators, and assigns, whether of the whole, or of a sectional interest there- in, shall be entitled to maintain a suit at law or in equity on such patent for any infringement of such part of the invention or discovery as shall be bond fide his own as aforesaid, not- withstanding 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 the 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. SECTION 10. And be it further enacted. That the Commis- sioner is hereby authorized and empowered to appoint agents, in not exceeding twenty of the principal cities or towns in the United States as may best accommodate the different sections of the country, for the purpose of receiving and forwarding to the Patent Office all such models, specimens of ingredients 552 THE PATENT STATUTES. and manufactures, as shall be intended to be patented or de- posited therein, the transportation of the same to be charge- able to the patent fund. SECTION 11. And be it further enacted. That, instead of one examining clerk, as provided by the second section of the act to which this is additional, there shall be appointed, in manner therein provided, two examining clerks, each to receive an annual salary of fifteen hundred dollars ; and also, an addi- tional copying clerk, at an annual salary of eight hundred dollars. And the Commissioner is also authorized to employ, from time to time, as many temporary clerks as may be neces- sary to execute the copying and draughting required by the first section of this act, and to examine and compare the records with the originals, who shall receive not exceeding seven cents for every page of one hundred words, and for drawings and comparison of records with originals, such reasonable compen- sation as shall be agreed upon or prescribed by the Commis- sioner. SECTION 12. And be it further enacted, That, wherever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, pursuant to the seventh section of the act to which this is additional, 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. SECTION 13. And 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 conscientiously scrupulous of taking an oath, affirmation may be substituted therefor. SECTION 14. And be it further enacted, That all moneys paid into the treasury of the United States for patents and for fees for copies furnished by the Superintendent of the Patent Office prior to the passage of the act to which this is additional, shall be carried to the credit of the patent fund created by said act ; and the moneys constituting said fund shall be, and the same are hereby, appropriated for the payment of the salaries THE PATENT STATUTES. 553 of the officers and clerks provided for by said act, and all other expenses of the Patent Office, including all the expenditures provided for by this act ; and also for such other purposes as are or may be hereafter specially provided for by law. And the Commissioner is hereby authorized to draw upon said fund, from time to time, for such sums as shall be necessary to carry into effect the provisions of this act, governed, however, by the several limitations herein contained. And it shall be his duty to lay before Congress, in the month of January, annually, a detailed statement of the expenditures and payments by him made from said fund ; And it shall also be his duty to lay be- fore Congress, in the month of January, annually, a list of all patents which shall have been granted during the preceding year, designating, under proper heads, the subjects of such patents, and furnishing an alphabetical list of the patentees, with their places of residence ; and he shall also furnish a list of all patents which shall have become public property during the same period ; together with such other information of the state and condition of the Patent Office as may be useful to Congress or the public. APPKOVED March 3, 1837. Kepealed July 8, 1870. 16 Statutes at Large, Chap. 230 v Section 111, p. 216. PATENT AOT OF 1839. 5 STATUTES AT LARGE, 353. An Act in addition to " An act to promote the progress of the useful arts." SECTION 1. Be it enacted by the Senate and House of Rep- resentatives of the United States of America in Congress as- sembled, That there shall be appointed, in manner provided in the second section of the act to which this is additional, two as- sistant examiners, each to receive an annual salary of twelve hundred and fifty dollars. SECTION 2. And be it further enacted, That the Commissioner be authorized to employ temporary clerks to do any necessary transcribing, whenever the current business of the office requires 554 THE PATENT STATUTES. it ; Provided however, That instead of salary, a compensation shall be allowed, at a rate not greater than is charged for copies now furnished by the office. SECTION 3. And be it further enacted, That the Commissioner is hereby authorized to publish a classified and alphabetical list of all patents granted by the Patent Office previous to said publication, and retain one hundred copies for the Patent Office and nine hundred copies to be deposited in the library of Congress, for such distribution as may be hereafter directed ; and that one thousand dollars, if necessary, be appropriated, out of the patent fund, to defray the expense of the same. SECTION 4. And be it further enacted, That the sum of three thousand six hundred and fifty-nine dollars and twenty- two cents be, and is hereby, appropriated from the patent fund, to pay for the use and occupation of rooms in the City Hall by the Patent Office. SECTION 5. And be it further enacted, That the sum of one thousand dollars be appropriated from the patent fund, to be expended under the direction of the Commissioner, for the purchase of necessary books for the library of the Patent Office. SECTION 6. And he it further enacted, That no person shall be debarred from receiving a patent for any invention or dis- covery, as provided in the act approved 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 ap- plication 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 letters-patent. SECTION 7. And he it further enacted, That every person or corporation who has, or shall have, purchased or constructed any newly invented machine, manufacture, or composition of matter, prior to the application by the inventor or discoveret for a patent, shall be held to possess the right to use, and vend to others to be used, the specific machine, manufacture, oi THE PATENT STATUTES. 555 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 application 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. SECTION 8. And be it further enacted, That so much of the eleventh section of the above recited act as requires the payment of three dollars to the Commissioner of Patents for recording any assignment, grant, or conveyance of the whole or any part of the interest or right under any patent, be, and the same is hereby, repealed ; and all such assignments, grants, and convey- ances shall, in future, be recorded, without any charge what- ever. SECTION 10. And be it further enacted, That the provisions of the sixteenth section of the before -recited act shall extend to all cases where patents are refused for any reason whatever, either by the Commissioner of Patents or by the Chief Justice of the District of Columbia, upon appeals from the decision of said Commissioner, as well as where the same shall have been refused on account of, or by reason of, interference with a pre- viously existing patent ; and in all cases where there is no op- posing party, a copy of the bill shall be served upon the Com- missioner of Patents, when the whole of the expenses of the proceeding shall be paid by the applicant, whether the final decision shall be in his favor or otherwise. SECTION 11. And be it further enacted, That in all cases where an appeal is now allowed by law from the decision of the Commissioner of Patents to a board of examiners, provided for in the seventh section of the act to which this is additional, the party, instead thereof, shall have a right to appeal to the Chief Justice of the district court of the United States for the District of Columbia, by giving notice thereof to the Commis- sioner, and filing in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal specifically get forth in writing, and also paying into the Patent Office, to 556 THE PATENT STATUTES. the credit of the patent fund, the sum of twenty-five dollars,, And it shall be the duty of said Chief Justice, on petition, to hear and determine all such appeals, and to revise such decisions in a summary way, on the evidence produced before the Com- missioner, at such early and convenient time as he may appoint, first notifying the Commissioner of the time and place of hear- ing, whose duty it shall be to give notice thereof to all parties who appear to be interested therein, in such manner as said judge shall prescribe. The Commissioner shall also lay before the said judge all the original papers and evidence in the case, together with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined. And at the request of any party interested, or at the desire of the judge, the Commissioner and the examiners in the Patent Office may be examined under oath, in explanation of the principles of the machine or other thing for which a patent, in such case is prayed for. And it shall be the duty of said judge, after a hear- ing of any such case, to return all the papers to the Commis- sioner, with a certificate of his proceedings and decision, which shall be entered of record in the Patent Office ; and such de- cision, so certified, shall govern the further proceedings of the Commissioner in such case : Provided however, That no opinion or decision of the judge in any such case shall preclude any person interested in favor or against the validity of any patent which has been or may, hereafter be granted from the right to contest the same in any judicial court, in any action in wliich its validity may come in question. SECTION 12. And be it further enacted. That the Commis- sioner of Patents shall have power to make all such regulations, in respect to the taking of evidence to be used in contested cases before him, as maybe just and reasonable. And so much of the act to which this is additional, as provides for a board of examiners, is hereby repealed. SECTION 13. And be it further enacted, That there be paid annually, out of the patent fund, to the said Chief Justice, in consideration of the duties herein imposed, the sum of one hundred dollars. THE PATENT STATUTES. 557 APPROVED March 3, 1839. Eepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1842. 5 STATUTES AT LARGE, 543. An Act in addition to an act to promote the progress of the useful arts, and to repeal all acts and parts of acts hereto- fore made for that purpose. SECTION 1. Be it enacted by the Senate and House of Rep. resentatives of the United States of America in Congress as- sembled, That the Treasurer of the United States be, and he hereby is, authorized to pay back, out of the patent fund, any sum or sums of money, to any person who shall have paid the same into the Treasury, or to any receiver or depositary to the credit of the Treasurer, as for fees accruing at the Patent Office through mistake, and which are not provided to be paid by existing laws, certificate thereof being made to the said Treasurer by the Commissioner of Patents. SECTION 2. And be it further enacted, That the third section of the act of March, eighteen hundred and thirty -seven, which authorizes the renewing of patents lost prior to the fifteenth of December, eighteen hundred and thirty-six, is exte'nded to patents granted prior to said fifteenth day of December, though they may have been lost subsequently : Provided however, The same shall not have been recorded anew under the provi- sions of said act. 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 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 pro- duced any new and original design 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 fabrics, or any new and original design for a bust, statue, or bas-relief or composition in alto or basso relievo, or any new 558 THE PATENT STATUTES. 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 article of manu- facture, or any new and original shape or configuration of any article of manufacture 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 application 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 ap- plication in writing to the Commissioner of Patents expressing such desire, and the Commissioner, on due proceedings had, may grant a patent therefor, as in the case now of application for a patent : Provided, That the fee in such cases, which by the now existing laws would be required of the particular ap- plicant, 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. SECTION 4. And l>e it further enacted, That the oath required for applicants for patents may be taken, when the applicant is not, for the time being, residing in the United States, before any minister, plenipotentiary, 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 such applicant may be. SECTION 5. And he it further enacted, That if any person or persons shall paint or print or mould, cast, carve, or engrave, or stamp, upon anything made, used, or sold, by him, for the sole making or selling which he hath not or shall not have obtained letters-patent, the name or any imitation of the name of any other person who hath or shall have obtained letters-patent for the sole making and vending of such thing, without consent of such patentee, or his assigns or legal rep- resentatives ; or if any person, upon any such thing not having THE PATENT STATUTES. 559 been purchased from the patentee, or some person who pur- chased it from or under such patentee,or not haying the license or consent of such patentee, or his assigns or legal representatives, shall write, paint, print, mould, cast, carve, engrave, stamp, or otherwise make or affix the word ' ' patent, ' ' or the words "letters-patent," or the word "patentee," or any word or words of like kind, meaning, or import, with the view or in- tent of imitating or counterfeiting the stamp, mark, or other device, of the patentee, or shall affix the same, or any word, stamp, or device, of like import, on any unpatented article, for the purpose of deceiving the public, he, she, or they, so of- fending, shall be liable for such offence to a penalty of not less than one hundred dollars, with costs, to be recovered by action in any of the circuit courts of the United States, or in any of the district courts of the United States having the powers and jurisdiction of a circuit court ; one half of which penalty, as recovered, shall be paid to the patent fund, and the other half to any person or persons who shall sue for the same. SECTION 6. And be it further enacted, That all patentees and assignees of patents hereafter granted are hereby required to stamp, engrave, or cause to be stamped or engraved, on each article vended, or offered for sale, the date of the patent ; and if any person or persons, patentees, or assignees, shall neglect to do so, he, she, or they shall be liable to the same penalty, to be recovered and disposed of in the manner speci- fied in the foregoing fifth section of this act. APPROVED August 29, 1842. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1848. 9 STATUTES AT LARGE, 231. An Act to provide additional Examiners in the Patent Office, and for other Purposes. SECTION 1. Be it enacted by the Senate and House of Rep- resentatives of the United States of America in Congress as- 560 THE PATENT STATUTES. sembled, That there shall be appointed, in the manner provided in the second sqction of the act entitled "An Act to promote the progress of useful arts, and to repeal all acts and parts of acts heretofore made for that purpose," approved July fourth, eighteen hundred and thirty-six, two principal examiners, and two assistant examiners, in addition to the number of ex- aminers now employed in the Patent Office ; and that hereafter each of the principal examiners employed in the Patent Office shall receive an annual salary of twenty-five hundred dollars, and each of the assistant examiners an annual salary of fifteen hundred dollars : Provided, That the power to extend patents, now vested in the board composed of the Secretary of State, Commissioner 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 here- after be vested solely in the Commissioner of Patents ; 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 having charge of the class of inventions to which said case belongs, who shall make full report to said Commissioner of the said case, and particularly whether the invention or im- provement secured in the patent was new and patentable when patented ; and thereupon the said Commissioner 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. SECTION 2. And be it further enacted, That hereafter 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 patented, when such instrument shall not exceed three hundred words ; the sum of two dollars when it shall exceed three hundred and shall not exceed one thousand words ; and the sum of three dollars when it shall exceed one thousand words ; which fees shall in all cases be paid in advance. SECTION 3. And be it further enacted, That there shall be THE PATENT STATUTES. 561 appointed in manner aforesaid, two clerks, to be employed in copying and recording, and in other services in the Patent Office, who shall each be paid a salary of one thousand two hundred dollars per annum. SECTION 4. And be it further enacted, That the Commis- sioner of Patents is hereby authorized to send by mail, free of postage, the annual reports of the Patent Office, in the same manner in which he is empowered to send letters and packages relating to the business of the Patent Office. APPROVED May 27, 1848. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1849. 9 STATUTES AT LARGE, 395. Section 2 of tHe Act entitled "An Act to establish the Home Department, and to provide for the Treasury Department an Assistant Secretary of the Treasury and a Commissioner of the Customs. ' ' SECTION 2. And ~be it further enacted, That the Secretary of the Interior shall exercise and perform all the acts of supervi- sion and appeal in regard to the office of Commissioner of Pat- ents, now exercised by the Secretary of State ; and the said Sec- retary of the Interior shall sign all requisitions for the advance or payment of money out of the Treasury on estimates or ac- counts, subject to the same adjustment or control now exercised on similar estimates or accounts by the First or Fifth Auditor and First Comptroller of the Treasury. APPROVED March. 3, 1849. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1852: 10 STATUTES AT LARGE, 75.. An Act in addition to " An Act to Promote the Progress of the Useful Arts," 562 THE PATENT STATUTES. SECTION 1. Be it enacted by the Senate and House of Rep- resentatives of the United States of America in Congress as- sembled, That appeals provided for in the eleventh section of the act entitled An Act in addition to an act to promote the prog- ress of the useful arts, approved March the third, eighteen hun- dred and thirty-nine, may also be made to either of the assistant judges of the Circuit Court of the District of Columbia, and all the powers, duties, and responsibilities imposed by the afore- said act, and conferred upon the chief judge, are hereby im- posed and conferred upon each of the said assistant judges. SECTION 2. And be it further enacted, That in case appeals shall be made to the said chief judge, or to either of the said assistant judges, the Commissioner of Patents shall pay to such chief judge or assistant judge the sum of twenty-five dollars, required to be paid by the appellant into the Patent Office by the eleventh section of said act, on said appeal. SECTION 3. And be it further enacted, That section thirteen of the aforesaid act, approved March the third, eighteen hun- dred and thirty-nine, is hereby repealed. APPROVED August 30, 1852. Kepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF FEBRUARY 18, 1861. 12 STATUTES AT LARGE, 130. An Act to extend the right of appeal from the decisions of Circuit Courts to the Supreme Court of the United States. SECTION 1. Be it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress as- sembled, That from all 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 grant- ing or confirming to authors the exclusive right to their respec- tive writings, or to inventors the exclusive right to their inven- tions or discoveries, a writ of error or appeal, as the case may require, shall lie, at the instance of either party, to the Su- preme Court of the United States, in the same manner and THE PATENT STATUTES. 563 nnder 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 controversy in the action. APPROVED February 18, 1861. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF MARCH 2, 1861. 12 STATUTES AT LARGE, 246. An Act in Addition to " An Act to promote the Progress of the useful Arts." SECTION 1. Be it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress as- sembled, That the Commissioner of Patents may establish rules for taking affidavits and depositions required in cases pending in the Patent Office, and such affidavits and depositions may be taken before any justice of the peace, or other officer authorized by law to take depositions to be used in the courts of the United States, or in the State courts of any State where such officer shall reside ; and in any contested case pending in the Patent Office it shall be lawful for the clerk of any court of the United States for any district or Territory, and he is hereby re- quired, upon the application of any party to such contested case, or the agent or attorney of such party, to issue subpoenas for any witnesses residing or being within the said district or Territory, commanding such witnesses to appear and testify be- fore any justice of the peace, or other officer as aforesaid, resid- ing within the said district or Territory, at any time and place in the subpoena to be stated ; and if any witness, after being duly served with such subpoana, shall refuse or neglect to ap- pear, or, after appearing, shall refuse to testify (not being privileged from giving testimony), such refusal or neglect being proved to the satisfaction of any judge of the court whose clerk shall have issued such subpoena, said judge may thereupon pro- ceed to enforce obedience to the process, or to punish the diso- bedience in like manner as any court of the United States may do in case of disobedience to process of subpoena ad testifican- 564: THE PATENT STATUTES. dum issued by such court ; and witnesses in such cases shall be allowed the same compensation as is allowed to witnesses at- tending the courts of the United States : Provided, That no witness shall be required to attend at any place more than forty miles from the place where the subpoena shall be served upon him to give a deposition under this law : Provided also, That no witness shall be deemed guilty of contempt for refus- ing to disclose any secret invention made or owned by him : And provided further, That no witness shall be deemed guilty of contempt for disobeying any subpcena directed to him by virtue of this act, unless his fees for going to, returning from, and one day's attendance at the place of examination, shall be paid or tendered to him at the time of the service of the subpoena. SECTION 2. And be it further enacted, That for the purposes of securing greater uniformity of action in the grant and refusal of letters-patent, there shall be appointed by the President, by and with the advice and consent of the Senate, three examiners in chief, at an annual salary of three thousand dollars each, to be composed of persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written petition of the applicant for that purpose being filed, to revise and de- termine upon the validity of decisions made by examiners when adverse to the grant of letters-patent ; and also to revise and determine in like manner upon the validity of the decisions of examiners in interference cases, and when required by the Commissioner in applications for the extension of patents, and to perform such other duties as may be assigned to them by the Commissioner ; that from their decisions appeals may be taken to the Commissioner of Patents in person, upon pay- ment of the fee hereinafter prescribed ; that the said examiners in chief shall be governed in their action by the rules to be prescribed by the Commissioner of Patents. SECTION 3. And be it further enacted, That no appeal shall be allowed to the examiners in chief from the decisions of the primary examiners, except in interference cases, until after the application shall have been twice rejected ; and the second examination of the application by the primary examiner shall THE PATENT STATUTES. 565 not be had until the applicant, in view of the references given on the first rejection, shall have renewed the oath of invention, as provided for in the seventh section of the act entitled " An act to promote the progress of the useful arts, and to repeal all acts and parts of acts heretofore made for that purpose," approved July fourth, eighteen hundred and thirty-six. SECTION 4. And be it further enacted, That the salary of the Commissioner of Patents, from and after the passage of this act, shall be four thousand five hundred dollars per annum, and the salary of the chief clerk of the Patent Office shall be two thousand five hundred dollars, and the salary of the librarian of the Patent Office shall be eighteen hundred dollars. SECTION 5. And he it further enacted, That the Commissioner of Patents is authorized to restore to the respective applicants, or when not removed by them, to otherwise dispose of such of the models belonging to rejected applications as he shall not think necessary to be preserved. The same authority is also given in relation to all models accompanying applications for designs. He is further authorized to dispense in future with models of designs when the design can be sufficiently repre- sented by a drawing. SECTION 6. And be it further enacted, That the tenth section of the act approved the third of March, eighteen hundred and thirty-seven, authorizing the appointment of agents for the transportation of models and specimens to the Patent Office, is hereby repealed. SECTION 7. And be it further enacted, That the Commis- sioner is further authorized, from time to time, to appoint, in the manner already provided for by law, such an additional num- ber of principal examiners, first assistant examiners, and sec- ond assistant examiners as may be required to transact the current business of the office with despatch, provided the whole number of additional examiners shall not exceed four of each class, and that the total annual expenses of the Patent Office shall not exceed the annual receipts. SECTION 8. And be it further enacted, That the Commissioner may require all papers filed in the Patent Office, if not cor- rectly, legibly, and clearly written, to be printed at the cost of 566 THE PATENT STATUTES. the parties filing such papers ; and for gross misconduct he may refuse to recognize any person as a patent agent, either gener- ally or in any particular case ; but the reasons of the Commis- sioner for such refusal shall be duly recorded, and be subject to the approval of the President of the United States. SECTION 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 withdrawn 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 application for a patent for the same invention. That the three months' notice given to any caveator, in pursuance of the requirements of the twelfth sec- tion of the act of July fourth, eighteen hundred and thirty-six, shall be computed from the day on which such notice is depos- ited in the post-office at Washington, with the regular time for the transmission of the same added thereto, which time shall be indorsed on the notice ; and that so much of the thirteenth section of the act of Congress, approved July fourth, eighteen hundred and thirty-six, as authorizes the annexing to letters- patent of the description and specification of additional improve- ments is hereby repealed, and in all cases where additional im- provements would now be admissible, independent patents must be applied for. SECTION 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 between the inhabitants of the United States and those of other countries, which shall not discriminate against the inhabitants of the United States, are hereby re- pealed, and in their stead the following rates are established : On filing each caveat, ten dollars. On filing each original application for a patent, except for a design, fifteen dollars. On issuing each original patent, twenty dollars. On every appeal from the examiner in chief to the Commis- sioner, twenty dollars. On every application for the reissue of a patent, thirty dollars. On every application for the extension of a patent, fifty THE PATENT STATUTES. 567 dollars ; and fifty dollars in addition, on the granting of every extension. On filing each disclaimer, ten dollars. For certified copies of patents and other papers, ten cents per hundred words. For recording every assignment, agreement, power of at- torney, and other papers, of three hundred words or under, one dollar. For recording every assignment, and other papers, over three hundred and under one thousand words, two dollars. For recording every assignment or other writing, if over one thousand words, three dollars. For copies of drawings, the reasonable cost of making the same. SECTION 11. 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 or their intention to become a citizen or citizens, who, by his, her, or their own in- dustry, genius, efforts, and expense may have invented or produced any new and original design, or a manufacture, whether of metal or other material or materials, and original design for a bust, statue, or bas-relief, or composition in alto or basso relievo, 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 article of manufacture, or any new and original shape or configuration of any article of manufacture, 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 application for a patent therefor, and who shall desire to obtain an exclu- sive 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 writing, to the Com- missioner of Patents, expressing such desire ; and the Commis- sioner, on due proceedings had, may grant a patent therefor, as in the case now of application for a patent, for the term of 568 THE PATENT STATUTES. 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 application : 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 dollars : 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 patent shall expire, upon the same terms and restrictions as are now provided for the extension of letters- patent. SECTION 12. And be 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 they shall be regarded as abandoned by the parties thereto ; unless it be shown to the satisfaction of the Commis- sioner of Patents that such delay was unavoidable ; and all applications now pending shall be treated as if filed after the passage of this act, and all applications for the extension of patents shall be filed at least ninety days before the expiration thereof ; and notice of the day set for the hearing of the case shall be published, as now required by law, for at least sixty days. SECTION 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-patent, it shall be the duty of such person to give sufficient notice to the public that said article is so 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 patented, that may be impracticable, 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 letters- patent by the party failing so to mark the article the right to which is infringed upon, no da-mage shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued after such notice to make THE PATENT STATUTES. 569 or vend the article patented. And the sixth section of the act entitled " An act in addition to an act to promote the prog- ress of the useful arts, ' ' and so forth, approved the twenty- ninth day of August, eighteen hundred and forty-two, be, and the same is hereby, repealed. SECTION 14. And be it further enacted, That the Commis- sioner of Patents be, and he is hereby, authorized to print, or in his discretion to cause to be printed, ten copies of the description and claims of all patents which may hereafter be granted, and ten copies of the drawings of the same, when drawings shall accompany the patents : Provided, The cost of printing the text of said descriptions and claims shall not exceed, exclusive of stationery, the sum of two cents per hun- dred words for each of said copies, and the cost of the drawing shall not exceed fifty cents per copy ; one copy of the above number shall be printed on parchment to be affixed to the letters-patent ; the work shall be under the direction, and sub- ject to the approval, of the Commissioner of Patents, and the expense of the said copies shall be paid for out of the patent fund. SECTION 15. And be it further enacted, That printed copies of the letters-patent of the United States, with the seal of the Patent Office affixed thereto and certified and signed by the Commissioner of Patents, shall be legal evidence of the con- tents of said letters-patent in all cases. SECTION 16. And be it further enacted, That all patents hereafter granted shall remain in force for the term of seven- teen years from the date of issue ; and all extension of such patents is hereby prohibited. SECTION 17. And be it further enacted. That all acts and parts of acts heretofore passed, which are inconsistent with the provisions of this act, be, and the same are hereby, repealed. APPROVED March 2, 1861. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. 570 THE PATENT STATUTES. PATENT ACT OF 1862. 12 STATUTES AT LAKGE, 583. Section 4 of an Act making supplemental appropriations for sundry civil expenses, &c. SECTION 4. For the fund of the Patent Office, fifty thousand eight hundred and fifty-five dollars and forty-nine cents, to supply a deficiency existing under the act of March second, eighteen hundred and sixty-one, entitled " An act in addition to an act to promote the progress of the useful arts" : Pro- vided, That the fourteenth section of said act be, and the same is hereby, repealed. APPROVED July 16, 1862. PATENT ACT OF 1863. 12 STATUTES AT LAKGE, 796. An Act to amend an Act entitled " An Act to promote the Progress of the useful Arts." SECTION 1. Be it enacted by the Senate and House of Rep- resentatives of the United States of America in Congress assembled. That so much of section seven of the act entitled "An act to promote the progress of the useful arts," approved July fourth, eighteen hundred and thirty-six, as requires a renewal of the oath, be, and the same is hereby, repealed. SECTION 2. And be it further enacted, That, whereas the falling off of the revenue of the Patent Office required a reduc- tion of the compensation of the examiners and clerks, or other employees in the office, after the thirty-first day of August, eighteen hundred and sixty-one, that the Commissioner of Patents be, and he is hereby, authorized, whenever the revenue of the office will justify him in so doing, to pay them such sums, in addition to what they shall already have received, as will make their compensation the same as it was at that time. SECTION 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 applicant or his agent. And if the final fee for THE PATENT STATUTES. 571 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- vided, That in all cases where patents have been allowed previ- ous to the passage of this act, the said six months shall be reck- oned from the date of such passage. APPROVED March 3, 1863. Kepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT ACT OF 1864. 13 STATUTES AT LARGE, 194. An Act amendatory of an Act to amend an Act entitled " An Act to promote the Progress of the Useful Arts," ap- proved March three, eighteen hundred and sixty- three. Be it enacted by the /Senate and House of -Representatives of the United States of America in Congress assembled, That any person having an interest in an invention, whether as the in- ventor or assignee, for which a patent was ordered to issue upon the payment of the final fee, as provided in section three 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 pay- ment be made within six months from the date of the passage of this act : Provided, That nothing herein shall be so con- strued as to hold responsible in damages any persons who have manufactured or used any article or thing for which a patent, as aforesaid, was ordered to be issued. APPROVED June 25, 1864. Kepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. 572 THE PATENT STATUTES. PATENT ACT OF 1865. 13 STATUTES AT LARGE, 533. An Act amendatory of ' ' An Act to amend an Act entitled 'An Act to promote the Progress of the useful Arts,' ap- proved March three, eighteen hundred and sixty -three." Be it enacted J>y the Senate and House of Representatives of the United States of America in Congress assembled, That any persons having an interest in an invention, whether as inventor or assignee, for which a patent was ordered to issue upon the payment of the final fee, as provided in section three of an act approved March three, eighteen hundred and sixty-three, but who has failed to make payment of the final fee as pro- vided in said act, shall have the right to make an application for a patent for his 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 appli- cation : Provided, That nothing herein shall be so construed as to hold responsible in damages any persons who have manu- factured or used any article or thing for which a patent afore- said was ordered to issue. This act shall apply to all cases now in the Patent Office, and also to such as shall hereafter be filed. And all acts or parts of acts inconsistent with this act are here- by repealed. APPROVED March 3, 1 865. Kepealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. PATENT STATUTE OF 1866. 14 STATUTES AT LARGE, 76. An Act in Amendment of an Act to promote the Progress of the Useful Arts, and the Acts in Amendment of an Addition thereto. JBe it enacted l)y the Senate and House of Representatives of the United States of America in Congress assembled, That upon appealing for the first time from the decision of the primary examiner to the examiners-in-chief in the Patent THE PATENT STATUTES. 573 Office, the appellant shall pay a fee of ten dollars into the Patent Office, to the credit of the patent fund : and no appeal from the primary examiner to the examiners-in-chief shall hereafter be allowed until the appellant shall pay said fee. APPROVED June 27, 1866. Repealed July 8, 1870. 16 Statutes at Large, Chap. 230, Section 111, p. 216. CONSOLIDATED PATENT ACT OF 1870. 16 STATUTES AT LARGE, 198. An Act to revise, consolidate, and amend the Statutes, relating to Patents and Copyrights. SECTION 1. Be it enacted by the Senate and House of Repre- sentatives of the United States of America in Congress assem- bled. That there shall be attached to the Department of the Interior the office, heretofore established, known as the Patent Office, wherein all records, books, models, drawings, specifi- cations, and other papers and things pertaining to patents shall be safely kept and preserved. [See Revised Statutes, Section 475.] SECTION 2. And be it further enacted, That the officers and employees of said office shall continue to be : one commissioner of patents, one assistant commissioner, and three examiners-in- chief, to be appointed by the President, by and with the advice and consent of the Senate ; one chief clerk, one examiner in charge of interferences, twenty-two principal examiners, twenty-two first assistant examiners, twenty-two second assist- ant examiners, one librarian, one machinist, five clerks of class four, six clerks of class three, fifty clerks of class two, forty- five clerks of class one, and one messenger and purchasing clerk, all of whom shall be appointed by the Secretary of the Interior, upon nomination of the Commissioner of Patents. [See Revised Statutes, Section 476.] SECTION 3. And be it further enacted, That the Secretary of the Interior may also appoint, upon like nomination, such additional clerks of classes two and one, and of lower grades, copyists of drawings, female copyists, skilled laborers, labor- 574 THE PATENT STATUTES. ers and watchmen, as may be from time to time appropriated for by Congress. [See Revised Statutes, Section 169.] SECTION 4. And be it further enacted, That the annual sal- aries of the officers and employees of the Patent Office shall be as follows : Of the commissioner of patents, four thousand five hundred dollars. Of the assistant commissioner, three thousand dollars. Of the examiners-in-chief, three thousand dollars each. Of the chief clerk, two thousand five hundred dollars. Of the examiner in charge of interferences, two thousand five hundred dollars. Of the principal examiners, two thousand five hundred dollars each. Of the first assistant examiners, one thousand eight hun- dred dollars each. Of the second assistant examiners, one thousand six hundred dollars each. Of the librarian, one thousand eight hundred dollars. Of the machinist, one thousand six hundred dollars. Of the clerks of class four, one thousand eight hundred dollars each. Of the clerks of class three, one thousand six hundred dol- lars each. Of the clerks of class two, one thousand four hundred dol- lars each. Of the clerks of class one, one thousand two hundred dollars each. Of the messenger and purchasing clerk, one thousand dollars. Of laborers and watchmen, seven hundred and twenty dol- lars each. Of the additional clerks, copyists of drawings, female copy- ists, and skilled laborers, such rates as may be fixed by the acts making appropriations for them. [See Revised Statutes, Sections 477, 440, and 167.] SECTION 5. And be it further enacted. That all officers and employees of the Patent Office shall, before entering upon their duties, make oath or affirmation truly and faithfully to THE PATENT STATUTES. 575 execute the trusts committed to them. [See Revised Statutes, Sections 1756 and 1757.] SECTION 6. And be it further enacted. That the commis- sioner and chief clerk, before entering upon their duties, shall severally give bond, with sureties, to the Treasurer of the United States, the former in the sum of ten thousand dollars, and the latter in the sum of five thousand dollars, conditioned for the faithful discharge of their duties, and that they will render to the proper officers of the treasury a true account of all money received by virtue of their office. [See Revised Statutes, Section 479.] SECTION 7. And be it further enacted, That it shall be the duty of the commissioner, under the direction of the Secretary of the Interior, to superintend or perform all the duties respect- ing the granting and issuing of patents which herein are, or may hereafter be, by law directed to be done ; and he shall have, charge of all books, records, papers, models, machines, and other things belonging to said office. [See Revised Statutes, Section 481.] SECTION 8. And be it further enacted, That the commis- sioner may send and receive by mail, free of postage, letters, printed matter, and packages relating to the business of his office, including Patent Office reports. [See 19 Statutes at Large, Chap. 103, Section 5, p. 335 ; and 20 Statutes at Large, Chap. 180, Section 29, p. 362.] SECTION 9. And be it further enacted, That the commis- sioner shall lay before Congress, in the month of January, an- nually, a report, giving a detailed statement of all moneys re- ceived for patents, for copies of records or drawings, or from any other source whatever ; a detailed statement of all expen- ditures for contingent and miscellaneous expenses ; a list of all patents which were granted during the preceding year, desig- nating under proper heads the subjects of such patents ; an alphabetical list of the patentees, with their places of resi- dence ; a list of all patents which have been extended during the year ; and such other information of the condition of the Patent Office as may be useful to Congress or the public. [See Revised Statutes, Section 494.] 576 THE PATENT STATUTES. SECTION 10. And be it further enacted ', That the examiners- in-chief shall be persons of competent legal knowledge and scientific ability, whose duty it shall be, on the written peti- tion of the appellant, to revise and determine upon the valid- ity of the adverse decisions of examiners upon applications for patents, and for reissues of patents, and in interference cases ; and when required by the commissioner, they shall hear and report upon claims for extensions, and perform such other like duties as he may assign them. [See Revised Statutes, Sec- tion 482.] SECTION 11. And be it further enacted, That in case of the death, resignation, absence, or sickness of the commissioner, his duties shall devolve upon the assistant commissioner until a successor shall be appointed, or such absence or sickness shall cease. [See Eevised Statutes, Sections ITT, ITS, and 1T9.] SECTION 12. And be it further enacted, That the commis- sioner shall cause a seal to be provided for said office, with such device as the President may approve, with which all rec- ords or papers issued from said office, to be used in evidence, shall be authenticated. [See Revised Statutes, Section 4T8.] SECTION 13. And be it further enacted, That the commis- sioner shall cause to be classified and arranged in suitable cases, in the rooms and galleries provided for that purpose, the models, specimens of composition, fabrics, manufactures, works of art, and designs, which have been or shall be deposit- ed in said office ; and said rooms and galleries shall be kept open during suitable hours for public inspection. [See Re- vised Statutes, Section 484.] SECTION 14. And be it further enacted, That the commis- sioner may restore ' to the respective applicants such of the models belonging to rejected applications as he shall not think necessary to be preserved, or he may sell or otherwise dispose of them after the application has been finally rejected for one year, paying the proceeds into the treasury, as other patent moneys are directed to be paid. [See Revised Statutes, Sec- tion 485.] SECTION 15. And be it further enacted, That there shall be purchased, for the use of said office, a library of such scien- THE PATENT STATUTES. 577 tific works and periodicals, both foreign and American, as may aid the officers in the discharge of their duties, not exceeding the amount annually appropriated by Congress for that pur- pose. [See Revised Statutes, Section 486.] SECTION ] 6. And be it further enacted. That all officers and employees 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 right or interest in any patent issued by said office. [See Revised Statutes, Section 480.] SECTION 17. And be it further enacted, That for gross mis- conduct the commissioner may refuse to recognize any person as a patent agent, either generally or in any particular case ; but the reasons for such refusal shall be duly recorded, and be subject to the approval of the Secretary of the Interior. [See Revised Statutes, Section 487.] SECTION 18. And be it further enacted, That the commis- sioner may require all papers filed in the Patent Office, if not correctly, legibly and clearly written, to be printed at the cost of the party filing them. [See Revised Statutes, Section 488.] SECTION 19. And be it further enacted, That the commis- sioner, subject to the approval of the Secretary of the Interi- or, may from time to time establish rules and regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. [See Revised Statutes, Section 483.] SECTION 20. And be it further enacted, That the commis- sioner may print or cause to be printed copies of the specifica- tions of all letters-patent and of the drawings of the same, and copies of the claims of current issues, and copies of such laws, decisions, rules, regulations, and circulars as may be necessary for the information of the public. [See Revised Statutes, Sections 489, 490, and 491.] SECTION 21. And be it further enacted, That all patents shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Secretary of the Interior and countersigned by the commis- sioner, and they shall be recorded, together with- the specifiJea- 578 THE PATENT STATUTES. tion, in said office, in books to be kept for that purpose. [See Revised Statutes, Section 4883.] SECTION 22. And le it further enacted, That every patent shall contain a short title or description of the invention or dis- covery, correctly indicating its nature and design, and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the said invention or discovery throughout the United States and the Territories thereof, referring to the specification for the par- ticulars thereof ; and a copy of said specifications and of the drawings shall be annexed to the patent and be a part there- of. [See Revised Statutes, Section 4884.] SECTION 23. And l>e 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. [See Revised Statutes, Section 4885.] SECTION 24. And l>e it further enacted, That any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others .in this country, and not patented, or described in any printed publication in this or any foreign country, before his inven- tion or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the duty required by law, and other due proceedings had, obtain a patent therefor. [See Revised Statutes, Section 488(5.] SECTION 25. And be it further enacted, 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 : Provided, The same shall not have been introduced into public use in the United States for more 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 THE PATENT STATUTES. 579 shortest term ; but in no case shall it be in force more than seventeen years. [See Revised Statutes, Section 4887.] SECTION 26. And be it further enacted, That before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the commissioner, and shall file in the Patent Office a writ- ten description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms 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 a machine, he shall explain the principle thereof, and the best mode in which he has contem- plated applying that principle so as to distinguish it from other inventions ; and he 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. [See Revised Statutes, Section 4888.] SECTION 27. And be it further enacted, That when the na- ture of the case admits of drawings, the applicant shall furnish one copy signed by the inventor or his attorney in fact, and attested by two witnesses, which shall be filed in the Patent Office ; and a copy of said drawings, to be furnished by the Patent Office, shall be attached to the patent as part of the specification. [See Revised Statutes, Section 4889.] SECTION 28. And be it further enacted, That when the in- vention or discovery is of a composition of matter, the appli- cant, if required by the commissioner, shall furnish specimens of ingredients and of the composition, sufficient in quantity for the purpose of experiment. [See Revised Statutes, Sec- tion 4890.] SECTION 29. And be it further enacted, That in all cases which admit of representation by model, the applicant, if re- quired by the commissioner, shall furnish one of convenient size to exhibit advantageously the several parts of his inven- tion or discovery. [See Revised Statutes, Section 4891.] SECTION 30. And be it further enacted, That the applicant 580 THE PATENT STATUTES. shall make oath or affirmation that he does verily believe him- self 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 within the United States authorized by law to administer oaths, or, when the ap- plicant resides in a foreign country, before any minister, charge d'affaires, consul, or commercial agent, holding com- mission under the government of the United States, or before any notary public of the foreign country in which the appli- cant may be. [See Revised Statutes, Section 4892.] SECTION 31. And be it further enacted, That on the filing of any such application and the payment of the duty required by law, the commissioner shall cause an examination to be made of the alleged new invention or discovery ; and if on such examination it shall appear that the claimant is justly en- titled to a patent under the law, and that the same is suffi- ciently useful and important, the commissioner shall issue a patent therefor. [See Revised Statutes, Section 4893.] SECTION 32. And be it further enacted, That all applica- tions for patents shall be completed and prepared for examina- tion 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 applicant, they shall be re- garded as abandoned by the parties thereto, unless it be shown to the satisfaction of the commissioner that such delay was un- avoidable. [See Revised Statutes, Section 4894.] SECTION 33. And be it further enacted, That patents may be granted and issued or reissued to the assignee of the invent- or or discoverer, the assignment thereof being first entered of record in the Patent Office ; but in such case the applica- tion for the patent shall be made and the specifications sworn to by the inventor or discoverer ; and also, if he be living, in case of an application for reissue. [See Revised Statutes, Section 4895.] THE PATENT STATUTES. 581 SECTION 34. And be it further enacted, That when any 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 intes- tate ; 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 ap- plication shall be made by such legal representatives, the oath or affirmation required to be made shall be so varied in form that it can be made by them. [See Revised Statutes, Sec- tion 4896.] SECTION 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 issue 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 there- of was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discov- ery the same as in the case of an original application : Pro- vided, That the second application 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, as aforesaid, was ordered to issue, prior to the issue thereof : And pro- vided further, That when an application for a patent has been rejected or withdrawn, prior to the passage of this act, the ap- plicant 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 aban- doned. Upon the hearing of such renewed applications aban- donment shall be considered as a question of fact. [See Re- vised Statutes, Section 4897.] SECTION 36. And be it further enacted, That every patent or any interest therein shall be assignable in law, by an instru- 582 THE PATENT STATUTES. ment 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 con- veyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof. [See Kevised Statutes, Section 4898.] SECTION 37. And be it further enacted, That every person who may have purchased of the inventor, or with his knowl- edge and consent may have constructed any newly invented or discovered machine, or other patentable article, prior to the application by 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. [See Revised Statutes, Sec- tion 4899.] SECTION 38. And be it further enacted, That it shall be the duty of all patentees, and their assigns and legal representa- tives, and of all persons making or vending any patented arti. cle for or under them, to give sufficient notice 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 can- not be done, by fixing to it or to the package wherein one or more of them is enclosed, 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 defendant was duly notified of the infi-inge- inent, and continued, after such notice, to make, use, or vend the article so patented. [See Kevised Statutes, Section 4900.] SECTION 39. And be it further enacted, That if any person shall, in any manner, mark upon any thing made, used, or sold by him for which he has not obtained a patent, the name or any imitation of the name of any person who has obtained a patent therefor, without the consent of such patentee, or his assigns or legal representatives ; or shall in any manner mark I THE PATENT STATUTES. 583 upon or affix to any such patented article the word " patent " or " patentee," or the words " letters-patent," or any word of like import, with intent to imitate or counterfeit the mark or device of the patentee, without having the license or con- sent of such patentee or his assigns or legal representatives ; or shall in any manner mark upon or affix to any unpatented article the word " patent," or any word importing that the same is patented, fer the purpose of deceiving the public, he shall be liable for every such offence to a penalty of not less than one hundred dollars, with costs ; one moiety of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offence may have been committed. [See Revised Stat- utes, Section 4901.] SECTION 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 the year by any other person for a patent with which such caveat would in any manner interfere, the com- missioner shall deposit the description, specification, draw- ings, and model of such application in like manner in the con- fidential 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 indorsed on the notice. And an alien shall have the privilege herein granted, if he shall have resided in the United States one year next preceding the filing 584: THE PATENT STATUTES. of his caveat, and made oath of his intention to become a citi- zen. [See Revised Statutes, Section 4902.] SECTION 41. And be it further enacted, That whenever, on examination, any claim for a patent is rejected for any reason whatever, the commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification ; and if, after receiving such notice, the applicant shall persist in his claim for a patent, with or without altering his specifications, the commissioner shall order a re-examina- tion of the case. [See Revised Statutes, Section 4903.] SECTION 42. And be it further enacted, That whenever an application is made for a patent which, in the opinion of the commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the commissioner may issue a patent to the party who shall be adjudged the prior inventor, unless the adverse party shall appeal from the decision of the primary examiner, or of .the board of examiners- in-chief, as the case may be, within such time, not less than twenty days, as the commissioner shall prescribe. [See Re- vised Statutes, Section 4904.] SECTION 43. And be it further enacted, That the commis- sioner may establish rules for taking affidavits and depositions required in cases pending in the Patent Office, and such af- fidavits and depositions may be taken before any officer author- ized by law to take depositions to be used in the courts of the United States, or of the State where the officer resides. [See Revised Statutes, Section 4905.] SECTION 44. And, be it further enacted, That the clerk of any court of the United States, for any district or territory wherein testimony is to be taken for use in any contested case pending in the Patent Office, shall, upon the application of any party thereto, or his agent or attorney, issue [a] subpO3na for any witness residing or being within said district or terri- * THE PATENT STATUTES. 585 tory, commanding him to appear and testify before any officer in said district or territory authorized to take depositions and affidavits, at any time and place in the subpoena stated ; and if any witness, after being duly served with such subpoena, shall neglect or refuse to appear, or after appearing shall refuse to testify, the judge of the court whose clerk issued the subpoena, may, on proof of such neglect or refusal, enforce obedience to the process, or punish the disobedience as in other like cases. [See Revised Statutes, Sections 4906 and 4908.] SECTION 45. And be it further enacted, That every witness duly subpoanaed and in attendance shall be allowed the same fees as are allowed to witnesses attending the courts of the United States, but no witness shall be required to attend at any place more than forty miles from the place where the subpoena is served upon him, nor be deemed guilty of contempt for disobeying such subpoena, unless his fees and travelling ex- penses in going to, returning from, and one day's attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena ; nor for refusing to dis- close any secret invention or discovery made or owned by him- self. [See Revised Statutes, Sections 4906, 4907, and 4908.] SECTION 46. And be it further enacted, That every appli- cant for a patent or the reissue of a patent, any of the claims of which have been twice rejected, and every party to an in- terference, may appeal from the decision of the primary ex- aminer, or of the examiner in charge of interference[s], in such case to the board of examiriers-in-chief, having once paid the fee for such appeal provided by law. [See Revised Stat- utes, Section 4909.] SECTION 47. And be it further enacted, That if such party is dissatisfied with the decision of the examiners-in-chief, he may, on payment of the duty required by law, appeal to the commissioner in person. [See Revised Statutes, Section 4910.] SECTION 48. And be it further enacted, That if such party, except a party to an interference, is dissatisfied with the deci- sion of the commissioner, he may appeal to the Supreme Court 586 THE PATENT STATUTES. of the District of Columbia, sitting in bane. [See Revised Statutes, Section 4911.] SECTION 49. And be it further enacted, That when an ap- peal is taken to the Supreme Court of the District of Colum- bia, the appellant- shall give notice thereof to the commis- sioner, and file in the Patent Office, within such time as the commissioner shall appoint, his reasons of appeal, specifically set forth in writing. [See Revised Statutes, Section 4912.] SECTION 50. And be it further enacted. That it shall be the duty of said court, on petition, to hear and determine such appeal, and to revise the decision appealed from in a summary way, on the evidence produced before the commissioner, at such early and convenient time as the court may appoint, notifying the commissioner of the time and place of hearing ; and the revision shall be confined to the points set forth in the reasons of appeal. And after hearing the case, the court shall return to the commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office, and govern the further proceedings in the case. But no opinion or decision of the court in any such case shall pre- clude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question. [See Revised Statutes, Section 4914.] SECTION 51. And be it further enacted, That on receiving notice of the time and place of hearing such appeal, the com- missioner shall notify all parties who appear to be interested therein in such manner as the court may prescribe. The party appealing shall lay before the court certified copies of all the original papers and evidence in the case, and the commis- sioner shall furnish it with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal. And at the request of any party interested, or of the court, the commissioner and the examiners may be examined under oath, in explanation of the principles of the machine or other thing for which a patent is demanded. [See Revised Statutes, Section 4913.] SECTION 52. And be it further enacted, That whenever a patent on application is refused, for any reason whatever, THE PATENT STATUTES. 587 either by the commissioner or by the Supreme Court of the District of Columbia upon appeal from the commissioner, the applicant may have remedy by bill in equity ; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his inven- tion, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the com- missioner to issue such patent, on the applicant filing in the Patent Office a copy of the adjudication, and otherwise com- plying with the requisitions of law. 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. [See Revised Statutes, Section 4915.] SECTION 53. And be it further enacted, That whenever any patent is inoperative or invalid, by reason of a defective or in- sufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive inten- tion, the commissioner shall, on the surrender of such a pat- ent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the cor- rected specification, to be issued to the patentee, or, in the case of his death or assignment of the whole or any undivided part of the original patent, to his executors, administrators, or assigns, for the unexpired part of the term of the original pat- ent, the surrender of which shall take effect upon the issue of the amended patent ; and the commissioner may, in his dis- cretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the ap- plicant, and upon payment of the required fee for a reissue for each of such reissued letters-patent. And the specifica- tions and claim in every such case shall be subject to revision and restriction in the same manner as original applications are. And the patent so reissued, together with the corrected speci- 588 THE PATENT STATUTES. fication, shall have the effect and operation in law, on the trial of all actions for causes thereafter arising, as though the same had been originally filed in such corrected form ; but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by the other ; but when there is neither model nor drawing, amendments may be made upon proof satisfac- tory to the commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, accident, or mistake, as afore- said. [See Revised Statutes, Section 4916.] SECTION 54. And be it further enacted, That whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or dis- coverer, 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 in- terest therein, may, on payment of the duty 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 as- signment, stating therein the extent of his interest in such patent ; said disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office, and it shall thereafter be considered as 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 affect any action pending at the time of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it. [See Revised Stat- utes, Section 4917.] SECTION 55. And be it further enacted, 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 jurisdiction of a cir- cuit court, or by the Supreme Court of the District of Colum- THE PATENT STATUTES. 589 bia, or of any territory ; and the court shall have power, upon bill in equity filed by any party aggrieved, to grant injunc- tions 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 infringe- ment, the claimant [complainant] shall be entitled to recover, in addition to the profits to be accounted for by the defend- ant, 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 ; but all actions shall be brought during the term for which the letters-patent shall be granted or extended, or with- in six years after the expiration thereof. [See Revised Stat- utes, Section 629, 1 9, and Section 4921.] SECTION 56. And be it further enacted, That a writ of error or appeal to the Supreme Court of the United States shall 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 judgments and decrees of such circuit courts, without regard to the sum or value in controversy. [See Revised Statutes, Section 699.] SECTION 57. And ~be it further enacted, That written or printed copies of any records, books, papers, or drawings be- longing to the Patent Office, and of letters-patent under the signature of the commissioner or acting commissioner, with the seal of office affixed, shall be competent evidence in all cases wherein the originals could be evidence, and any person making application therefor, 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 590 THE PATENT STATUTES. and contents thereof. [See Kevised Statutes, Sections 892 and 893.] SECTION 58. And be it further enacted, That whenever there shall be interfering patents, any person interested in any one of such interfering patents, or in the working of the in- vention claimed under either of such patents, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the inter- fering patent ; and the court having cognizance thereof, as hereinbefore provided, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the rights of any person except the parties to the suit and those deriving title under them subse- quent to the rendition of such judgment. [See Revised Stat- utes, Section 4918.] SECTION 59. And be it further enacted, That damages for the infringement of any patent may be recoTered by action on the case in any circuit court of the United States, or district court exercising the jurisdiction of a circuit court, or in the Supreme Court of the District of Columbia, or of any Terri- tory, in the name of the party interested, 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 sustained, according to the cir- cumstances of the case, not exceeding three times the amount of such verdict, together with the costs. [See Revised Stat- utes, Section 629, ^ 9, and Section 4919.] SECTION 60. And be it further enacted, That whenever, through inadvertence, accident, or mistake, and without any wil[l]ful default or intent to defraud 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 THE PATENT STATUTES. 591 original and first inventor or discoverer as aforesaid, every such patentee, his executors, administrators, and assigns, whether of the whole or any sectional interest in the patent, may main- tain a suit at law or in equity, for the infringement of any part thereof, which was bona fide his own, provided it shall be a material and substantial part of the thing patented, and be definitely distinguishable from the parts so claimed, with- out right as aforesaid, notwithstanding the specifications may embrace more than that of which the patentee was the origi- nal or first inventor or discoverer. But in every such case in which a judgment or decree 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 entitled to the benefits of this section if he shall have unreasonably neglected or delayed to enter said disclaimer. [See Revised Statutes, Section 4922.] SECTION 61. And be it further 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 at- torney, 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 de- scription 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 unjustly obtained the patent for that which was in fact invented by another, who was using reasonable 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 discov- ery thereof ; or, Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented ; or, Fifth. That it had been in public use or on sale in this 592 THE PATENT STATUTES. country, for more than two years before his application for a patent, or had been abandoned to the public. And in notices as to proof of previous invention, knowledge, or use of the thing patented, the defendant shall state the names of patentees 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 where and by whom 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 an- swer of the defendant, and with the like effect. [See Re- vised Statutes, Section 4920.] SECTION 62. And be it further enacted, That whenever it shall appear that the patentee, at the time of making his appli- cation for the patent, believed himself to be the original and first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or discovery, or any part thereof, having been known or used in a foreign country, before his invention or discovery thereof, if it had not been patented or described in a printed publica- tion. [See Revised Statutes, Section 4923.] SECTION 63. And be it further enacted, That where the pat- entee of any invention or discovery, 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 application therefor, in writing, to the commissioner, setting forth the reasons why such extension 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 ex- hibit a true and faithful account of the loss and profit in any manner accruing to him by reason of said invention or discov- ery. And said application shall be filed not more than six months nor less than ninety days before the expiration of the THE PATENT STATUTES. 593 original term of the patent ; and no extension shall be granted after the expiration of said original term. [See Revised Stat- utes, Section 4924.] SECTION 64. And be it further enacted, That upon the re- ceipt of such application, and the payment of the duty re- quired 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 the country most interested 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 extension should not be granted. [See Revised Statutes, Section 4925.] SECTION 65. And be it further enacted, That on the publica- tion 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 patentable when the original patent was granted. [See Revised Statutes, Section 4926.] SECTION 66. And be it further enacted, That the commis- sioner 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 satis- faction 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 expense 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 commissioner shall make a certificate thereon, renew- ing and extending the said patent for the term of soven years from the expiration of the h'rst 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 origi- nally granted for twenty-one years~ [See Revised Statutes, Section 4927.] 594 THE PATENT STATUTES. SECTION 67. And he it further enacted, That 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 extent of their interest therein. [See Revised Statutes, Section 4928.] SECTION 68. And be it further enacted, That the following shall be the rates for patent fees : On filing 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 patent, 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 primary examiners to the examiners-in-chief , ten dollars. On every appeal from the examiners-in-chief to the com- missioner, twenty dollars. For certified copies of patents and other papers, ten cents per hundred words. For recording every assignment, agreement, power of at- torney, or other paper, of three hundred words or under, one dollar ; of over three hundred and under one thousand words, two dollars ; of over one thousand words, three dollars. For copies of drawings, the reasonable cost of making them. [See Revised Statutes, Section 4934.] SECTION 69. And be it further enacted, That patent fees may be paid to the commissioner, or to the treasurer or any of the assistant treasurers of the United States, or to any of the designated depositaries, national banks, or receivers of public money, designated by the Secretary of the Treasury for that purpose, who shall give the depositor a receipt or certificate of deposit therefor. And all money received at the Patent Office, for any purpose, or from any source whatever, shall be paid into the treasury as received, without any deduction whatever ; and all disbursements for said office shall be made THE PATENT STATUTES. 595 by the disbursing clerk of the Interior Department. [See Revised Statutes, Sections 496 and 4935.] SECTION 70. And be it further enacted, That the Treasurer of the United States is authorized to pay back any sum or sums of money to any person who shall have paid the same into the treasury, or to any receiver or depositary, to the credit of the treasurer, as for fees accruing at the Patent Office through mistake, certificate thereof being made to said treas- urer by the Commissioner of Patents. [See Revised Statutes, Section 4936.] SECTION 71. And be it further enacted, That any person who, by his own industry, genius, efforts, and expense, has invented or produced any new and original design for a manu- facture, bust, statue, alto-relievo, or bas-relief ; any new and original design for the printing of wool[l]en, silk, cotton, or other fabrics ; any new and original impression, ornament, pattern, print, or picture, to be printed, painted, cast, or otherwise placed on or worked into any article of manufact- ure ; 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 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 cases of inventions or dis- coveries, obtain a patent therefor. [See Revised Statutes, Section 4929.] SECTION 72. And be it further enacted, That the commis- sioner may dispense with models of designs when the design can be sufficiently represented by drawings or photographs. [See Revised Statutes, Section 4930.] SECTION 73. And be it further enacted, That patents for designs may be granted for the term of three years and six months, or for seven years, or for fourteen years, as the appli- cant may, in his application, elect. [See Revised Statutes, Section 4931.] SECTION 74. And be it further enacted, That patentees of designs issued prior to March two, eighteen hundred and sixty- one, shall be entitled to extension of their respective patents 596 THE PATENT STATUTES. for tlie 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. [See Re vised Stat- utes, Section 4932.] SECTION 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 discoveries. [See Revised Statutes, Section 4934.] SECTION 76. And be it further enacted, That all the regula- tions and provisions which apply to the obtaining or protection of patents for inventions or discoveries, not inconsistent with the provisions of this act, shall apply to patents for designs. [See Revised Statutes, Section 4933.] [Sections 77 to 110, inclusive, refer to trade -marks and copy- rights, and not to patents.] SECTION 111. And be it further enacted, That the acts and parts of acts set forth in the schedule of acts cited, hereto an- nexed, are hereby repealed, without reviving any acts or parts of acts repealed by any of said acts, or by any clause or pro- visions therein : Provided, however, That the repeal hereby enacted shall not affect, impair, or take away any right exist- ing under any of said laws ; but all actions and causes of ac- tion, both in law or in equity, which have arisen under any of said laws, may be commenced and prosecuted, and if already commenced may be prosecuted to final judgment and execu- tion, in the same manner as though this act had not been passed, excepting that the remedial provisions of this act shall be applicable to all suits and proceedings hereafter com- menced : And provided also, That all applications for patents pending at the time of the passage of this act, in cases where the duty has been paid, shall be proceeded with and acted on in the same manner as though filed after the passage thereof : And provided further, That all offences which are defined THE PATENT STATUTES. 597 and punishable under any of said acts, and all penalties and forfeitures created thereby and incurred before this act takes effect, may be prosecuted, sued for, and recovered, and such offences punished according to the provision of said acts, which are continued in force for such purpose. APPROVED July 8, 1870. Repealed June 22, 1874. Revised Statutes, Title LXXIV. PATENT ACT OF MARCH 3, 1871. 16 STATUTES AT LAKGE, 583. An Act to amend an Act to revise, consolidate, and amend the Statutes relating to Patents and Copyrights. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That that part of section thirty-three of an act entitled " An act to revise, consolidate, and amend the statutes relating to pat- ents and copyrights," approved July eighth, eighteen hundred and seventy, which requires that, in case of application by as- signee or assignees for reissue of letters-patent, the application shall be made and the specification sworn to by the inventor or discoverer, if living, shall not be construed to apply to pat- ents issued and assigned prior to July eighth, eighteen hun- dred and seventy. * APPROVED March 3, 1871. Repealed June 22, 1874. Revised Statutes, Title LXXIV. PATENT ACT OF MARCH 24, 1871. 17 STATUTES AT LARGE, 2. An Act to further regulate the publication of the Specifications and Drawings of the Patent Office. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That if, in the judgment of the joint committee on printing, the provisions of the joint resolution providing for publishing specifications and drawings of the Patent Office, approvc'd January eleventh, eighteen hundred and seventy-one, can bo 598 THE PATENT STATUTES. performed under the direction of the Commissioner of Patents more advantageously than in the manner provided in said joint resolution, it shall be so done, under such limitations and conditions as the joint committee on printing may from time to time prescribe. SECTION 2. That the price of the printed copies of specifica- tions and drawings of patents, when uncertified, shall be de- termined by the Commissioner of Patents, ten cents being hereby fixed as the minimum, and fifty cents as the maximum price of the same ; certified copies to be sold at the price fixed by the patent act of eighteen hundred and seventy. APPROVED March 24, 1871. Repealed June 22, 1874. Revised Statutes, Title LXXIV. THE REVISED STATUTES RELATING TO PATENTS. 440. Clerks and employes. 441. Secretary of the Interior. 475. Establishment of the Patent Office. 476. Officers and employes. 477. Salaries. 478. Seal. 479. Bonds of Commissioner and chief clerk. 480. Restrictions upon officers and employes. 481. Duties of Commissioner. 482. Duties of examiners-in-chief. 483. Establishment of regulations. 484. Arrangement and exhibition of models, 1 INTERFERENCES defined, 140. number of possible, 141. when decision in, is a foundation for a preliminary injunction, 674. INTERFERENCE ACTIONS IN EQUITY authorized, 316. decrees in, 320. INTERFERING PATENTS, causes of, 315. defined, 315. INVALIDITY when a cause of reissuability, 216. INVENTION absent from mere aggregation, 32. absent from mere change in degree, 31. absent from mere duplication, 34. absent from mere enlargement, 30. absent from mere improvement in workmanship , 27. absent from mere omission of parts, 35. absent from mere substitution of equivalents, 36. absent from mere substitution of superior materials, 28. absent from new combination of old devices having no new mode of operation, 37. absent from new use of old process or thing, 38. absent from product of mere mechanical skill, 25. evidence of want of, 505. form no criterion of, 41. necessary to patentability, 23. questions of presence or absence of, are determined by negative rules, 24. questions of presence or absence of, are questions of fact, 42. questions of presence or absence of, are sometimes affected by the state of the art, 43. questions of presence or absence of, are sometimes determined by comparative xitility, 40. want of, how pleaded, in actions at law, 446. want of, how pleaded in actions in equity, 599. want of, how proven, 505. JOINT INFRINGEMENT, facts which constitute, 407. profits recoverable in cases of, 712. JOINT INFRINGEBS as defendants, 406. contribution between, 531. releases to one of several, 531. 702 INDEX. JOINT INVENTION distinguished from sole invention, 45, 46. distinguished from suggestions to sole inventors, 47. for sole patent, how pleaded in actions at law, 452. for sole patent, how pleaded in actions in equity, 605. for sole patent, how proven, 516. for sole patent, voids the latter, 50. JOINT PATENT for sole invention, how pleaded in actions at law, 452. for sole invention, how pleaded in actions in equity, 605. for sole invention, how proven, 517. for sole invention, voids the former, 51. JOINT TENANCY, how severed, if it exists, 293. JUDGES directing juries to find verdicts for defendants, 536. trying actions at law without juries, 540. JUDICIAL LEGISLATION, so called, 634. JUDICIAL NOTICE in respect of pleadings, 445. when taking the place of evidence, 505, 599. JUDGMENTS by default pleadable as res judicata, 468. for amount larger than verdict, finding, or report, 542. when and how entered, 542. JUNIOR PATENT, conformity to, of defendant's doings, relevant to motions for prelimi- nary injunctions, 687. conformity to, of defendant's doings, relevant to trial of issue of in- fringement in action at law, 532. JURISDICTION, consent of parties cannot confer, 390. in interference actions, 316. in qui tarn actions, 331. of Commissioner of Patents, to issue letters patent, 148, 178. of Commissioner of Patents, to grant extensions, 266. of Commissioner of Patents, to grant reissues, 211-225. of Circuit Courts over actions for infringement against agents of the United States government, 393. of Court of Claims in patent cases, 391, 392. of courts of first resort in patent cases, 379. of equity in patent cases, 572, 573, 592, 593, 658, 689. INDEX. 7 NOVELTY Continued. not negatived by prior accidental and not understood production. 67. not negatived by prior description of substantially different thing or process, 57. not negatived by prior model, 61. not negatived by prior private foreign patent, 55. not negatived by prior unenrolled English patent, 55. not negatived by prior use in foreign country, 54. not negatived by prior useless process or thing, 65. not negatived by substantially different prior process or thing, 62. not negatived by unpublished drawings, 61. of designs, 64. predicated of everything which is absolutely new, 52. predicated of some things not absolutely new, 53. want of, how pleaded in actions at law, 447. want of,, how pleaded in actions in equity, 600. want of, how proven, 76, 506-508. want of, how rebutted, 509, 510. OATHS, affirmations substituted for, 124. effect of waiving, in bills, 581. to answers, 581. to bills in equity, 584. to pleas in equity, 589. to specifications, 122, 123. OBITER DICTA, weight of, 537. OBJECTIONS, to evidence, 535. to evidence before masters, 741. ICEKS OF CORPORATIONS, as defendants, 410, 411, 413, 415. ' OSSION, as affecting infringment, 338, 349, 369. as affecting invention, 35. as affecting sameness of invention, 244. i SALE, consent to being, more than two years before application, 102. in foreign country more than two years before application, 101. more than two years before application, 93. patent law meaning of the phrase, 96. TION, of patentee-licensor, to sue for royalty or for infringment, 309. JAL DESCRIPTIONS, whether fixing dates of subsequently patented invention, 70. 710 INDEX. OWNEBS IN COMMON, as plaintiffs or complainants, 399. must join in surrender and reissue, 252. PABTTTION, of patent rights, 295. PARTNERSHIPS, as defendants, 408. licenses to, 310. PATENTABILITY, prerequisites of, 6, 23. PATENTS, alleged abandonment of, 106, 107. beginning of terms of, 170. consideration given for, 153. duration of, 162-169. expiration of, before end of apparent term, how pleaded in actions at law, 462. expiration of, before end of apparent term, how pleaded in actions in equity, 615. expiration of, before end of apparent term, how proven, 527. founded upon what, 150. granted for what subjects, 1. interfering, 315. not odious monopolies, 153. plurality of, when suable on in one action, 417. repeal of, 321. territory covered by, 160. when dated, 170. PATENT LAWS, the sources of, 537, 634. PATENT EIGHTS, absolute, not qualified, 154. dignity of, 152. exclusive of government, 157. not subject to common law execution, 156. property, 151. relevant to specimens made or purchased before application for, 158. subject to creditors' bills, 156. PATENT OFFICE RULES, founded on what, 109. governing applications, 109. relevant to applications, 109. relevant to drawings, 126. relevant to interferences, 140. relevant to models, 127. relevant to specimens of compositions of matter, 128. INDEX. 711 PENALTIES, for disobedience of injunctions, 710. in qui tarn actions, 329. PERPETUATION op TESTIMONY, bills for, 585. PETITIONS, for letters patent, 110. PLAINTIFFS, costs recoverable by, 543. in actions at law for infringement, 394-400. in qui tarn actions, 330. PLEAS IN ACTIONS AT LAW, bad in part, bad altogether, 482. demttrrable, when, 484. dilatory, 439. in bar, 440. of actual abandonment, 449. of constructive abandonment, 449. ' of deceptively lacking or excessive specification, 453. of estoppel, 467. of expiration of patent, 462. of indistinct claims, 455. of insufficient specification, 454. of joint invention for sole patent, 452. of joint patent for sole invention, 452. of license, 465. of making or selling without marking " patented," 463. of non-infringement, 466. of release, 465. of repeal of patent, 461. of rule in Miller v. Brass Co. , 458. of statutes of limitation, 471. of surreptitious or unjust obtaining of patent, 451. of unreasonable delay to file needed disclaimer, 456. of want of being a statutory subject of a patent , 446. of want of identity between application and letters patent, 450. of want of identity between letters patent and reissue, 469. of want of invention, 446. of want of novelty, 447. of want of reissuability, 457. of want of statutory application for extension, 460. of want of title, 464. of want of utility, 448. FLEAS IN ACTIONS IN EQOTTY, found bad in law 590. found good in law, and true in fact, 590, 649. 712 INDEX. PLEAS IN ACTIONS IN EQUITY Continued. found good in law, and untrue in fact, 590. proceedings on, 590. replications to, 590. to bills in the nature of supplemental bills, 631. to original bills, 588, 589. to supplemental bills, 631. POLICE POWER, over specimens of patented things, 155. PRACTICE, in actions at law, 489. in actions in equity, 489. on bills to repeal patents, 323. on masters' findings, 750. PRAYERS, for preliminary injunctions, 660. for process, 582. for relief, 580. PREAMBLE, of specifications, 111, 112. PRESUMPTIONS, that inventors borrowed whatever in their inventions was old, 43. that letters patent are for same inventions as applications, 190. that reissues are for same inventions as originals, 243. PRIMARY INVENTIONS, defined, 359. PRIMARY PATENTS, how infringed, 360, 362. PRINCIPLE, of invention, how explained in specifications, 115. PRINCIPLES, distinguished from processes, 7-15. not patentable, 2, 7. PRINTED PUBLICATIONS, defined, 56. PRIOR ABANDONED EXPERIMENTS, as affecting novelty, 63. PRIOB ADJUDICATION, a foundation for a preliminary injunction, 665, 666. PRIOR MAKING, may negative novelty, 72. INDEX. 71;; PRIOR FEINTED PUBLICATION, negatives novelty, 56. PKIOB PBIVATE FOREIGN PATENT, never negatives novelty, 55. PRIOR PUBLIC PATENT, negatives novelty, 55. PRIOR UNENROLLED ENGLISH PATENT, never negatives novelty, 55. PRIOR USE, in foreign country never negatives novelty, 54. in this country negatives novelty, 71. PRIORITY, question of, between rival inventors, how settled, 140-142, 315-320. PROCESSES, claims for, how construed, 186. distinguished from principles, 7-15. patent-law meaning of the word, 3-6. PROCESS PATENTS, claims in specifications of, 120. exclusive of those who practised the process after invention and be- fore application, 159. infringed, how, 335-338. PROFEHT, in declarations and bills of complaint, 433, 579. PROFITS, account of, covering what time, 714. accruing before surrender and reissue, 231. decrees for, 573. defendants', recoverable in equity, 711. evidence of, 636, 740. from infringement by making and selling, 717-723, 736. from infringement by selling, 724. from infringement by using, 725-734. generic rule for ascertaining, 716. interest on, 736-738. not measured by damages, 716. proceedings for ascertaining, 739-750. recoverable in cases of joint infringement, 712. recoverable in cases where infringement was partly unprofitable, 713. PROPORTION, change of as affecting infringement of patent for composition of mat- ter, 373. 714 INDEX. PUBLIC KNOWLEDGE, after invention and prior to application, 100. PUBLIC USE, consent to, more than two years before application, 102. more than two years before application, 93. patent-law meaning of the phrase, 94, 95. QUESTIONS OF FACT, abandonment, 108. absence or presence of invention, 42. infringement, 339. novelty, 75. sufficiency of specification, 179. Supreme Court decisions on, 635. QUESTIONS OF LAW, arising on hearings in equity, 634. arising on trials at law, 537. construction of letters patent, 189. Qui TAM ACTIONS, declarations in, 332. form of, 332. functions of, 324. penalties in, 329. plaintiffs in, 330. writs of error in, 334. wrongs remedied by, 325-327. RAILWAY Co. v. SAYLES, rule in, 184, 359-362. REABBANGEMENT, of parts as affecting infringement, 348. RECEIVES, of court, invoking licenses to insolvent, 310. KECOBD, letters patent, matter of, 191. KECOBDING, of assignments, 281. of grants, 287. of licenses, 304. KECOVEBY, of damages or profits working license, 314. REFEBEE, trial by, 541. INDEX. 7 1 REHEARING, effect of, on accounting, 648. for matter apparent on the record, 646. on account of newly discovered evidence, 647. petitions for, 645. REINVENTION, what right conferred by, 158. REISSUES, applications for, 214. beginning of history of, 210. broadened, 219, 226, 227. cannot cover subject of prior disclaimer, 241. claims of, disclaimed, 201. construed liberally, 248. covered by assignment of original, 250. covering things made before date of, 254. how stated in declarations, 429. invalidity of, for want of reissuability of original, how pleaded in actions at law, 457. invalidity of, for want of reissuability of original, how pleaded in ac- tions in equity, 610. invalidity of, for want of reissuability of original, how proven, 522. legal effect of, 254. must be for same invention as original, 233. mutual owners must join in application for, 252. need not be confined to claims of original, 235. new matter in, 214. not affected by more than two years' prior public use or sale, 229. not broadened, 228. not granted after expiration of original, 232. not grantable for matter not described or shown in original, 234. novelty of, dating from when, 254. of reissues, 232. prima-facie evidence of their own validity, 492. relevant to basing on models, 238. remedies for refusal to allow, 214. rights of grantees under, 253. to assignees, 212,. 214, 250, 252. to executors or administrators, 250. to one of several executors, 251. statutory foundation of, 211-215. subjects of, 216. substituting equivalents in, 247. under the statute of 1832, 211. under Jhe statute of 1836, 212. under the statute of 1837, 213. 716 INDEX. REISSUES Continued. under the statute of 1870, 214. under the Revised Statutes, 215. void in part and valid in part, 249. when may claim single device shown, but not separately claimed in the original, 246. when may claim sub-combination shown, but not described in the original, 245. where there is neither model nor drawing, 214. REJOINDEBS, bad in part, bad altogether, 482. function of, in actions at law for infringement, 478, 480. RELEASES, how pleaded in actions at law, 465. how pleaded in actions in equity, 619. how proven, 531. need not be negatived in plaintiff's evidence in chief, 496. to one of several joint infringers, 531. REMEDIES, for infringement, where treated in this book, 378. REPEAL OF PATENTS, for what cause had, 321. in what courts obtainable, 322, 323. how pleaded in actions at law, 461. how pleaded in actions in equity, 614. how proven, 526. practice in cases of bills for, 323. REPLICATIONS IN ACTIONS AT LAW, bad in part, bad altogether, 482. function of, in patent cases, 478-480. when demurrable in patent cases, 485. REPLICATIONS IN ACTIONS IN EQUITY, to answers, 623. to pleas, 590. REPOETS, exceptions to masters', 745-749. masters' draft, 744. masters' final, 750. RES JUDICATA, foundation, limitations, and operation of the doctrine of, 468. how pleaded in actions at law, 470. how pleaded in actions in equity, 621. how proven, 533. in interferences, 141, 142. INDEX. 71,' RESULT, as affecting infringement, 340. necessary to utility, 77. RIGHTS, kin,ds of, in patented inventions, 155. of inventors, patentees, etc., where treated in this book, 378 RIGHTS or ACTION, assignment of, 277. assignment of, how protected from subsequent purchasers, 281. ROOT v. RAILWAY Co. , , rule in, 572, 592, 593. ROYALTIES, as measures of damages, 556-558. established rate of, how affecting right to preliminary injunction, 686. for making, 564. for making and using, no criterion of damages for making and selling, or vice versa, 561. of plaintiff, no measure of recoverable profits, 716. option of patentee-licensor to sue for, or for infringement, 309. regard to proportion, in measuring damages by, 562. reserved on sale of patents, no measure of damages, 560. SAME INVENTION, as affected by omission of parts, 244. how disproved, 243. implies sameness with original and all former reissues, 242. letters patent must be for same as applications, 138, 440, 450, 514, 603. meaning of the phrase, 234-239. presumption of, 190, 243. reissues must be for same as originals, 233, 440, 459, 524. 612. SAWYEB, JUDGE, opinion of, on witness fees as taxable costs, 548. SECONDARY INVENTIONS, defined, 359. how infringed, 361, 362. SHEPLEY, JUDGE, opinion of, on repeal of patents, 322. opinion of, on State statutes of limitation, 477. opinion of, on substitution of ingredients in compositions of matter, 371. SHIPMAN, JUDGE NATHANIEL, opinion of, on decree where disclaimer is found necessary. 300. opinion of, on duration of patents for inventions previoualy patented in a foreign country, 167. opinion of, on invention, 29. opinion of, on novelty, 65. 718 INDEX. SHIPMAN, JUDGE W. D., opinion of, on indistinctness of claims, 177. opinion of, on liability of officers, directors, and stockholders of cor- porations for corporate infringement, 410. opinion of, on proceedings before masters, 741. SHIPS, American, practice of patented invention on board of, on high seas, 161. foreign, use of patented invention on board of, in United States ports, 161. SHIKAS, JUDGE, opinion of, on mode of operation, 343. SIGNATURES, to drawings, 126. to specifications, 111, 121. SlMILITER, function and importance of, 481. SKILFUL MECHANIC, meaning of the phrase, 57. SOLE INVENTION, distinguished from joint invention, 45, 46. for joint patent, 51. not inconsistent with received mechanical assistance, 49. not inconsistent with specially sought information, 48. SPECIAL PLEADING, ancient function of, 442. SPECIFICATION, claims the operative parts of, 219. constituents of, 111. deceitfully lacking or excessive, how pleaded in actions at law, 453. deceitfully lacking or excessive, how pleaded in actions of equity, 606. deceitfully lacking or excessive, how proven to be, 518. insufficient, how pleaded in actions at law, 454. insufficient, how pleaded in actions in equity, 607. insufficient, how proven to be, 519. meaning of the word, 173, 217. oath to, 122, 123. STANDARD OF COMPARISON, under the rule in Mowry v. Whitney, 732-734. STATES, power of over patented articles, 155. INDEX. 7,9 STATE COURTS, jurisdiction of, over actions to enforce or set aside contracts relevant to patents, 388. jurisdiction of, over creditors' bills filed to secure debts out of patent rights, 289. question of jurisdiction of, in infringement actions, 380-387. STATE OF THE AET, affecting questions of invention, 43. claims construed in the light of, 184. evidence of experts relevant to, 500. mistake relevant to, how remedied. 220. STATUTES, special, grafted upon general statutes, 188. STATUTES OF LIMITATION, application of, to actions in equity, 622. how pleaded in actions at law, 471. how pleaded in actions in equity, 622. the national, 472-475. the State, 476, 477. when requiring evidence to support plea of, 534. STOCKHOLDERS IN CORPORATIONS, as defendants, 410, 411, 412, 415. STORY, JUSTICE, opinion of, on abandonment of patents, 107. opinion of, on jurisdiction of State courts in patent cases, 382. opinion of, on liability of officers, directors, and stockholders of corporations for corporate infringement, 415. opinion of, on patent covering thing made before application, 158, 159. STRONG, JUSTICE, opinion of, on force of Commissioner's decision in reissue cases, 22*2. SUB-COMBINATIONS, when may be claimed in reissues, though not claimed in originals, 245. > SUBJECT OF PATENT, want of being, how pleaded in actions at law, 440. want of being, how pleaded in actions in equity, 598. want of being, how proven, 504. SUBSTANTIALLY, variant force of the word, 362. SUBSTANTIALLY AS DESCRIBED, function of the phrase, 182. when the phrase is implied, 182. 720 INDEX. SUBSTITUTION, as affecting infringement, 350, 370, 371. SUGGESTIONS TO INVENTOES, distinguished from joint invention, 47. SUPEKSEDEAS, on appeal to Supreme Court, 654. SUPPLEMENTAL BILLS, leave of court necessary to filing, 630. subordinate to original bills, 624. when proper, 625. SUPPLEMENTAL BILLS IN THE NATURE OF BILLS OF REVIEW, character and function of, 647, 648. SUPREME COURT OF THE UNITED STATES, action of, on appeals, 656. action of, on certificates of division of opinion, 657. application to, for leave to file in court below, a bill of review, in a case already sent to Supreme Court, 652. hearing of appeals in, 655. writs of error in, 550. SUPREME COURT OF THE DISTRICT OF COLUMBIA, appeals to, 132, 133. SUH-REJOINDERS, function of, in actions at law for infringement, 478. SURRENDER OF INVENTIONS, how effected, 105. SURRENDER OF LETTERS PATENT, effect of, on accrued damages and profits, 231. mutual owners must join in, 252. when reissue is refused, 231. with a view to reissue, 230-232. SUSPENSION, of permanent injunctions pending appeals, 703. SWAYNE, JUSTICE, opinion of, on force of Commissioner's decision in reissue cases, 223. opinion of, on joint invention, 46. TANET, CHIEF-JUSTICE, opinion of, on reissuability of patents, 226. TAXATION OF COSTS, appeal from, 549. how and when made, 549. TEMPORARY RESTRAINING ORDERS, pending motions for preliminary injiinctions, 664. INDEX. 721 TENANCY IN COMMON, in patent rights, 292. TENANTS IN COMMON, rights of, 294. TERM OF PATENT, how fixed, 112. TERRITORY, covered by patents, 160. TEST CASES, pendency of, excusing delay, 684. TESTIMONY, in actions at law, 535. in actions ia-equity, 638. TEXT-WRITERS, weight of statements of, 537. TIME, for taking depositions in actions in equity, 639. TITLE, after acquired, 282. by assignment, 274. by bankruptcy, 290. by creditor's bill, 289. by death, 291. by grant, 287. by occupancy, 273. certainty of, necessary to preliminary injunctions, 665, 675. conveyance of legal, conveying equitable, 286. conveyed by estoppel, 275. equitable, how arising, 274, 285. how stated in declarations, 432. how proven, 495. in a plurality of persons, 292. inchoate, 273. methods of acquisition of, 272. to reissues, 250. to reissues when granted to executors or administrators, 251 variant nature of, 272. want of, how pleaded in actions at law, 464. want of, how pleaded in actions in equity, 617. want of, how proven, 529. warranty of, 282. TRESPASS ON THE CASE, actions of, for infringements of patents, 418, 421. character of action of, 442. declarations in actions of, 422-438. 722 INDEX. TRIALS, by judges without juries, 540. by juries, 488. by juries in eqttity cases, 642. by juries of issues sent out of equity, 595. by referees, 541. of actions at law, 487. TEUSTEE, infringer treated as, in respect of his profits, 715. TBUSTS, constructive, 285. resulting. 285. Two YEARS, sale or public use more than, before application, 93, 229. UNANIMITY OF JURIES, history of, 488. UNAUTHORIZED MARKING, how punished, 325. how restrained, 333. USEFUL ART, subject of a patent, 1. USES, all, of patented thing, covered by the patent, 180. UTILITY, burden of proof in respect of, 85. constituent elements of, 77. doubts relevant to, 85. in respect of infringement, 376. may reside in beauty, 80. must be stated in declarations, 424. necessary to patentability, 77. necessary to whatever is claimed to negative novelty, 65. negatived where function is always evil, 81. not negatived by mere imperfection, 79. patents prima fa cie evidence of, 85. performance of specified function necessary to, 78. want of, how pleaded in actions at law, 448. want of, how pleaded in actions in equity, 601. want of, how proven, 511. when functions are thought by some to be good, and by others to ba evil, 83. where functions sometimes work good, and sometimes work evil, 82. where primary function is good, and ultimate function is evil, 84. INDEX. 723 VAT.TDITY, certificate of extension prima facie evidence of its own, 493. defendant's admission of, when foundation of right to preliminary injunction, 673. letters patent prima facie evidence of their own, 491. reissues prima facie evidence of their own, 492. special presumption of, necessary to preliminary injunction, 6C5. warranty of, 283, 284. VENUE, how laid in declarations, 422. VERDICTS, in patent cases, 538. WALLACE, JUDGE, opinion of, on abandonment of patents, 107. opinion of, on decree where disclaimer is found necessary, 209. opinion of, on subjects of patents, 5. WARRANTY, of title, 282. of validity, 283, 284, 307. WASHINGTON, JUSTICE, opinion of, on abandonment of patents, 106. opinion of, on jurisdiction of State courts in patent cases, 383. WHEELER, JUDGE, opinion of, on actions of assumpsit for infringements of patents, 419. opinion of, on decree where disclaimer is found necessary, 209. opinion of, on duration of patents for inventions previously patented in a foreign country, 169. opinion of, on force of Commissioner's decision in reissue cases, 223. opinion of, on McClurg v. Kingsland, 159. opinion of, on subjects of patents, 5. WITNESSES, to specifications, 121. to want of novelty, need not be named as such, in notices of special matter, 444. WOODBUBY, JUSTICE, opinion of, on rehearing for matter apparent on face of record, 640. WOODRUFF, JUDGE, opinion of, on mode of operation, 345. opinion of, on witness fees taxable as costs, 548. WOODS, JUSTICE, opinion of, on pleading facts of which courts take judicial notice, 445. 2i INDEX. WOBKMANSHD?, distinguishable from invention, 27. WEITS OF EKKOB, function of, 550. in qui tarn actions, 334. where cases are tried by judges without juries, 540. WEONUS, classification of, 411, of infringement, where treated in this book, 378. INDEX TO FORMS AND EQUITY RULES. ABANDONMENT, BULK PAOB of allowance of amendment of bill 30 656 ACCOUNT, form of, to be submitted to masters 79 673 AFFIDAVIT, of service of process 15 650 supporting motion to amend bill after replication. ... 29 655 supporting motion to set aside decree pro confesso. ... 19 652 AFFIBMATION, in lieu of oath 91 676 AMENDMENT, of answers 60 664 of bills after allowance of demurrer 35 657 of bills after defendants' pleading and before replica- tion..-. 29,45 jjjg of bills after replication 29 655 of bills before defendants' pleading 28 <'''< of bills by adding parties -62 662 of bills, when to be made after allowance 30 '''' ANSWEB, amendment of 60 ' I defences pleadable in 39 658 exceptions to 61 665 form of. 641 separate, when improper 62 to amendment of bill 46 tocrossbill 72 670 to supplemental bill 67 used as affidavit, when ... 41 '' s verified before whom . . 59 t 726 INDEX TO FOKMS AND EQUITY RULES. APPEAKANCE, BULE PAGE of defendants, when due 17 651 of nominal defendants 54 662 ATTACHMENT, / />fr-j writ of, to compel answer 18, 64 writ of, to enforce order or decree 7, 8 648 BILL, address of 20 652 amendment of, after answer 29, 45 < ,, amendment of, after replication 29 655 amendment of, before answer 28 655 amendment of, by adding parties 52 662 charging part unnecessary in 21 652 confederacy part unnecessary in 21 652 effect of waiving answer under oath in 41 658 form of 634 frameof 20 652 impertinence in 26 654 interrogating part of 40, 41, 43 658 introductory part of 20 652 jurisdiction part unnecessary in 21 652 must be filed before subpoena can issue 11 649 nominal parties to 54 662 prayers of .... , 21 652 requisite statement of, when filed by stockholder against corporation and other parties 94 676 scandalous matter in 26 654 signature of counsel to 24 654 stating part of 21 652 taken pro confesso 18 651 BILL IN THE NATURE or A BILL OF REVIVOB, when necessary 56 663 BILL IN THE NATURE OF A SUPPLEMENTAL BILL, when necessary 57 664 BILL OF KEVTVOB, statements of 58 664 when necessary 56 663 CIEOUIT COURTS, always open for certain purposes 1 646 power of, to make addditional rules 89 675 CLEBKS OF CIRCUIT COURTS, power of, to grant certain motions 5 647 INDEX TO FORMS AND KQUITY RULES. 727 COSTS, BULB PAOE for bill or answer 25 654 on allowing demurrer or plea 35 657 on exceptions to master's report 84 674 on hearing of exceptions to answer 65 ' ' ' on neglect to prosecute reference to master 74 671 on overruling demurrer or plea 34 657 CROSS BILL, proceedings upon 72 670 DECLARATION, form of 626 DECREE, form of 86 674 how enforced 7, 8 648 in cases where part of interested persons are out of jurisdiction 47 660 in cases where part of numerous interested persons are not made parties .'.... 48 661 in foreclosure cases 92 676 pro confesso, how entered 18 651 pro confesso, how set aside 19 652 reference to master in 73 when correctable without rehearing 85 674 where objection of want of parties is first made at the hearing 63 DEMURRER, effect of allowing 35 effect of overruling 34 necessity of setting down for argument 38 not overruled for narrowness. . . . , not overruled for sameness with answer. .'. 37 prerequisites to filing setting down for argument to supplemental bills 67 DOCKET, suits when entered upon 18 EVIDENCE, used before masters 80 EXCEPTIONS TO ANSWERS, pi rrn allowance of hearingof M overruling of. 66 Ml setting down for hearing whentobe filed 61 728 INDEX TO FORMS AXD EQUITY RULES. EXCEPTIONS TO MASTERS' REPOBTS, RULE PAGE filed when 83 674 heard when 83 674 FOEM, of answer 641 of bill 634 of declaration 626 of plea in equity 639 of plea at law 629 of replication in equity 645 of replication at law 632 of rejoinder. . . 633 of sur-rejoinder 634 GUARDIANS, adlitem 87 675 as parties 87 675 HEARING, before masters 74, 77 * ^Ii ( o/^ of demurrers 34-37 657 of exceptions to answer 63, 64 665 of exceptions to master's report 83 674 of motions 6 648 of motions for injunctions 55 663 of motions for leave to file supplemental bills 57 664 of pleas 34-37 657 want of parties suggested at 53 662 what testimony read at 69 669 INJUNCTIONS, duration of 55 663 motion for 55 663 prayerfor 21 652 suspension of, pending appeal 93 676 when granted on a default 55 663 INTERLOCUTORY ORDERS, power of judges to make 3 646 INTERROGATORIES, when need not be answered 44 660 JUDGES, power of, to make interlocutory orders 3 646 power of, to suspend, alter, or rescind orders made by clerks.. 5 647 INDEX TO FORMS AXD EQUITY RULES. 729 LACHES, nrijj PAOE fatal to motions for leave to amend bill after replica- tion 29 ;:,.-, fatal to order giving permission to amend bill :!ti ^ <;;,r. fatal to order referring bill to master for scandal or im- pertinence 27 !'.." I MASTEKS IN CHANCERY, compensation of 82 (',7:1 examining bills for scandal or impertinence 26 i',:> i exceptions to reports of . . . 83 074 how appointed 82 (',7:! proceedings before 74-82 <>71 references to 73 670 statements in reports of 76 c-71 MOTIONS, for injunctions 55 ''.i;:i to amend answers 60 <;<; I to amend bills 29 '">." to extend time for taking testimony 69 <'><;' to file replications, mine pro tune 66 CiC.i; to file supplemental bill 57 <'ii;i to set aside decrees pro confesso 19 652 when grantable by clerks 5 647 when grantable only by judges 6 ' 1 NOTE, to interrogatories in bill 41, 42 ' "^ NOTICE, constructive, of orders, rules, and proceedings 4 647 of motion for injunction 55 <^:t of motion to amend answer 60 ".<; I of motion to amend bill 29 u.V. of motion to file supplemental bill 57 ''<' I of proceedings before masters 75-78 (171 to take evidence 67, 68, 70 to order of court, how compelled 7-10 / til.* OBEDIENCE, to 01 ORDER BOOK, entry of defendant's appearance upon 17 how kept * PABTTES, guardians as heirs-at-law as , M nominal.. "- 730 INDEX TO FORMS AND EQUITY BULES. PARTIES, BTJLE PAGE objections for want of 52 662 trustees as '. . . 49 661 vh^re a plurality of persons are jointly and severally liable 51 662 where interested persons are out of the jurisdiction. . . 47 660 where interested persons are very numerous 48 661 PLEA, effect of allowance of 35 657 effect of overruling of 34 657 effect of proof of truth of 33 657 form of, in equity form of, at law 629 necessity of replication to, or setting down for argu- ment 38 658 not overruled for narrowness 36 657 not overruled for sameness with answer 37 657 prerequisites to filing 31 656 setting down for argument 33 657 taking issue upon 33 657 to supplemental bills 57 664 PLEADING, of defendants, varieties of 32 of defendants, when due 18 651 PRACTICE, when governed by that of the High Court of Chancery in England 90 676 PBAYEBS, for general relief 21 652 21 23 ^ 652 for injunctions ** * a 1 653 for process against persons without the jurisdiction . . 22 653 for special relief 21 for subpoena ad respondendum 23 653 oq ^652 for writ of ne exeat li " -J 553 PEOCESS, by whom served 15 varieties of.. 7 648 PEOCHIEN AMIS, as p; BEHEAEING, as parties - 87 675 petitions for when grantable 88 675 REJOINDER, formof G33 INDEX TO FORMS AND EQUITY RULES. 731 REPLICATION, BUIJ[ PAOE effect of filing 66 >;>;<\ effect of omission to file 60 ';'. form of, in equity 41 645 form of, at law 632 no special, allowed 45 660 when to be filed 66 666 RULE DAY, the first Monday of every month 2 646 SUBPOENA AD RESPONDENDDM, how served 13 650 toties quoties 14 650 when issued 12 650 when returnable 12 650 SUBPOSNA AD TESTIFICANDUM, how issued and enforced 78 672 SUPPLEMENTAL BILLS, statements in 58 664 when necessary 57 664 SUB-BEJOINDEB, form of 634 TESTIMONY, debeneesse 70 669 how taken in general 67-71 667 ( 672 how taken before masters 77, 78, 81 TBUSTEES, as parties 49 661 WITNESSES, attendance of, how compelled 67, 78 WBTTS, of assistance 7, 9 of attachment 7, 8, 18, 64 681 [666 of execution 8 ' I ^ \ ''"'- of injunction. . 21,23,55 -{653 [661 irv i ',.! of sequestration 7, 8